It may come as a surprise that even patent attorneys don’t believe that every invention should be patented. The time, effort and expense of preparing and filing a patent application should be reserved for those inventions that are likely to provide an advantage. Here is a list of criteria to help judge evaluate whether an invention should patented. These can also help prioritize multiple inventions, and help decide which inventions may be worthy of extra investment.
| NATURE OF THE INVENTION |
| Does the invention relate to a new product or service? |
| Does the invention relate to an improvement in an existing product or service? |
| Does the invention relate to an improvement in the manufacturing or distribution of an existing product or service? |
| TECHNOLOGICAL SIGNIFICANCE |
| The invention solves a problem only faced by Company’s particular approach. |
| The invention solves a problem faced by Company’s major competitor(s). |
| The invention solves a problem faced by the Industry at large. |
| The invention provides a new capability for Company’s products. |
| The invention provides a new capability for Company’s and major competitor’s products |
| The invention provides a new capability for the products of the industry at large. |
| The invention improves quality. |
| The invention makes the product easier to use/more reliable. |
| The invention makes the product safer. |
| The invention reduces costs. |
| TIMELINESS |
| The invention is being implemented. |
| Implementation of the invention is scheduled. |
| Implementation of the invention is planned. |
| No immediate plans to implement the invention. |
| The invention is presently fully developed. |
| The invention could be fully developed as a routine matter with minimal resources. |
| The invention will require significant resources to completely develop. |
| The invention will require a major project to completely develop. |
| The invention is currently only theoretically possible. |
| COMMERCIAL SIGNIFICANCE |
| The invention relates to a high volume, high profit product. |
| The invention relates to a medium volume, high profit product. |
| The invention relates to a high volume, medium profit product. |
| The invention relates to a low volume, high profit product. |
| The invention relates to a medium volume, medium profit product. |
| The invention relates to a high volume, low profit product. |
| The invention relates to a low volume, medium profit product. |
| The invention relates to a medium volume, low profit product. |
| The invention relates to a low volume, low profit product. |
| COMMERCIAL IMPACT |
| DEMAND |
| The invention creates an entirely new product or service. |
| The invention involves a feature that makes the Company’s product critical to all or most customers |
| The invention adds a feature that makes the Company’s product superior to all or most customers. |
| The invention adds a features that is critical to an important subgroup of customers. |
| SALES |
| The invention will make it more likely most consumers would purchase the Company’s product/service. |
| The invention will make it more likely that some customers will purchase the Company’s product/service. |
| The invention will allow the Company to sell other unrelated products. |
| PRICING |
| The invention will allow the Company to increase prices. |
| The invention will allow the Company to maintain prices. |
| The invention will force competitors to reduce prices to compete. |
| NON-INFRINGING ALTERNATIVES |
| The anticipated claim scope cannot be designed around. |
| The anticipated claim scope cannot be designed around without considerable time or expense. |
| The anticipated claim scope cannot be designed around without competitively significant delay or expense. |
| The anticipated claim scope cannot be designed around without inconvenient delay or expense. |
| The non-infringing alternatives are equivalent. |
| The non-infringing alternatives are acceptable. |
| The non-infringing alternatives would be regarded as unsatisfactory to most customers. |
| The non-infringing alternatives would be regarded as unsatisfactory to a significant subset of customers. |
| SCOPE OF PROTECTION |
| The invention relates to entirely new technology with great prospects of patentability. |
| The invention relates to a new application of technology with good prospects of patentability. |
| The invention is a minor advance with surprising result and fair prospects of patentability. |
| The invention is a minor improvement with a chance of patentability |
| The patent would be infringed by a single entity (vs. multiple entities acting together). |
| The patent would be infringed in a single country. |
| Infringements of the patent could be easily detected. |
| The Company is likely to enforce the patent against anticipated infringers. |
| The Company might enforce the patent against anticipated infringers. |
| The Company probably would not enforce the patent against anticipated infringers. |
| ALTERNATIVE PROTECTION |
| The invention can be protected in whole or in part as a trade secret. |
| The invention can be protected in whole or in part with copyright. |
| The invention can be protected in whole or in part with trademark or trade dress. |
| The invention can be protected in whole or in part with a design patent. |
| OTHER CONSIDERATIONS |
| Patenting the invention is important to building/maintaining a portfolio. |
| Patenting the invention is important to the marketing department. |
| Patenting the invention is important to an important customer. |
| Patenting the invention is important to a strategic partner. |
| Patenting the invention is politically expedient (important to management). |
| Patenting the invention is required by contractual obligation. |
| Patenting the invention is useful as a defensive position. |
| Patenting the invention could be useful in future licensing or cross-licensing. |