3 questions to ask before you file a patent application
Your engineers are coming up with stacks of inventions all of the time. I guarantee it. And I could come into your business today and find a dozen things that you could get a patent for. But just because you could get a patent for them, doesn’t mean you should. Patent protection is expensive and you need to spend that money wisely, so how do you discover which inventions are worth the investment?
In this blog post, I will give you a skeleton methodology for making that determination. It’s not the only way to do it, but if you implement it in your business then you’ll be spending your budget wisely and massively increasing your chances of creating a valuable patent portfolio for your business.
So what are the 3 things you should consider before calling your patent attorney to start drafting a patent?
1. How strong is the commercial case?
2. How inventive is the invention?
3. How easy is it to reverse engineer the invention?
Note: as discussed in another blogpost, the first step in good IP management is to harvest all of your inventions, whether they are ground breaking or not. Each one needs to be recorded in an invention disclosure form (IDF) and be reviewed so you can decide what to do with them. You should build these 3 questions into that review.
How strong is the commercial case?
The framing of the question here is intentional. In my experience, there is always a commercial case that can be made for a particular invention, but often the expected commercial opportunities are not realised and the tech business is left with a worthless patent application that is costing them money to process. This is often because there is a yawning gap between thinking of a commercialisation opportunity and taking the steps to realise that opportunity.
The lesson here is to challenge, challenge and challenge again when you are discussing the commercial case for filing a patent application to an invention.
For each tech business, the commercial case will be different, but some examples are below.
· The invention covers core technology that is central to the business’s offering
· The invention is not core but there is an opportunity to licence the technology
· We want to block a competitor
One key point that we don’t consider in depth here is that the commercial case should be kept under review. Patents take a long time to grant and the needs of the business may change in that time. Also, if the commercial case relates to licensing the technology then progress against that should be monitored before significant points of expenditure. If the commercial case is no longer relevant then you might consider dropping the application.
How inventive is the invention?
This question is essentially about how close the invention is to existing solutions. Is the invention a huge leap forward or is it an incremental improvement on an existing technology? Getting a feel for this will allow you to get an understanding of the potential scope of the patent you might achieve — if you’re breaking newer ground then you could end up with a very powerful patent that can block out large sections of the market. On the other hand, incremental improvements on the current solutions will be more limited in scope, which doesn’t mean a patent application should not be filed, but will (and should) affect your thinking.
How easy is it to reverse engineer the invention?
At the heart of this question is the fact that patent applications are published. When you file a patent application you are therefore committing to telling the world how you do your thing. That very valuable thing that you’ve just established is commercially very important to you.
If the invention can be easily reverse engineered by anyone who buys your products or gets hold of them another way then publishing the invention in a patent application is no problem. In fact, getting a patent application filed in these circumstances would be very valuable protection.
On the other hand, if reverse engineering would be impossible, which can be the case with software, for example, then maybe publishing your invention might not be the best approach. There are other options, such as Trade Secrets, although these carry their own risks and you should get proper advice before going down that route.
In summary, the most important thing is that you have a system. You can use the above as a foundation for that system. You can add some additional questions that are specific to your business. Or you can do something completely different. I’ve seen it work well when a scoring system is used to answer each question — a mark out of 10, for example — and the total used to rank inventions .But whatever you do, you should have a process. That will make sure that your patent portfolio is fully considered and will be properly suited to enhancing your business’s chances of success.
Photo credit to Ketut Subiyanto from Pexels