With many companies facing constrained resources, it is important to carefully prioritize patenting activities to make sure that they will generate a sufficient return on investment. Many companies, especially those that are inexperienced with the patent process, have difficulty determining whether it is "worth it" to file a patent application for particular inventions. Here are some considerations that can help in the patenting decision.

 

Are the Patentable Features Commercially Beneficial?

 

Perhaps the most important consideration is whether the patent you are likely to obtain is commercially useful. You should assess: 1) what the scope of patent protection will likely be, and 2) whether that scope will be commercially useful.

 

The Patent Office only grants patents for those inventions that are both novel and non-obvious, meaning that the scope of protection will be limited to the specific features that distinguish the invention from the prior art (e.g., previous patents, published patent applications, articles, etc.). It may be the case that a particular product or process has features that are new and which could support the issuance of a patent. However, if those features can easily be eliminated without losing the main benefits of the product or process, patent protection may be of little value because competitors will be able to "design around" your patent. Therefore, before filing a patent application, it is advisable to conduct a prior art search and determine what type of patent claims you may ultimately be able to obtain and whether such claims will provide a competitive advantage in the marketplace.

 

How Will You Commercially Exploit the Invention?

 

Another factor to consider is how you would exploit the invention if you were awarded a patent. If you lack the resources to commercialize the invention, are there others with whom you could join forces or to whom you could license the patent rights? It is important to understand whether and how you could ultimately monetize the patent to determine if your money is being wisely invested.

 

Will the Patent Be Difficult to Enforce?

 

Even if you get a patent, you may not be able to determine whether your competitors are infringing it. Consider what information your competitors make publicly available and whether it will reveal whether your invention is being used. If it will not, then it may be difficult to determine if your patent is being infringed. Patents for methods of making a product can be particularly difficult to enforce unless the product itself reveals whether the method was used. In cases where infringement cannot easily be detected, trade secret protection may be superior to patent protection.

 

What is the Life Cycle of the Invention?

 

Some industries move very quickly, but the U.S. Patent and Trademark Office does not. It may be difficult to obtain a patent while your invention is still commercially relevant to customers. There are procedures for expediting the examination of patent applications which may help. However, you should consider whether you can obtain a patent while the invention is still commercially significant.

 

The foregoing considerations are not exhaustive, and there may be other reasons to obtain patents, such as for their marketing benefits. Nevertheless, patent budgets are finite, and these considerations will help you decide which inventions are worth patenting.