It is challenging at best to ensure the most bang for your buck when protecting your commercial technology with patents. The nuanced and expensive patent process is exacerbated by recent U.S. patent law changes, Supreme Court decisions altering the patent landscape and patent fee increases. Deciding whether to file a patent application, then where and how to file, is daunting to any business.
Even with these hurdles, patents remain an important business tool for licensing, competitive sophistication and credibility in most markets. Most businesses have patents: software to systems, green energy to energy drinks, diodes to drugs. A review of the flowchart below, which addresses whether or not to patent, is a first step to sort priorities and make sound business decisions. (Future installments will address if, how, where, when, what and why to patent.)
Each business must determine if a patent would offer it a business benefit. A simple yes or no to the following questions can align objectives. Would a patent provide an edge among competitors? Would it prevent others from entering your territory? Would it establish your product in a new market? If you cannot discern even a potential benefit, you may not want to proceed.
If you do decide to proceed, assess your invention. Is it a new product (aka device, apparatus, compound or composition)? Is it a new method (aka process, system or use)? Then assess if your invention in the market would be easy for your competitors to copy or to improve upon. If it is easy to copy or improve upon, consider filing a patent application to protect it. If it is not easy to copy or improve upon, consider pursuing a non-patent route of protection, e.g., trade secret or copyright.
Determine if your invention is likely to be patentable over the current state of the art. Your analysis can be perfunctory or comprehensive, depending on your budget, competitor knowledge and zeal to patent. You can, but are not required to, search the art. If you search, you can perform a high-level landscape search or an in-depth portfolio search.
The following chart provides a path for these assessments:
Click here to view flowchart.
The suggested actions of the flow chart will guide your business decision priorities. The actions are not set in stone because situations vary, but they do provide a framework and starting point to answer the “should we patent” question.