It may come as a surprise that even patent attorneys don’t believe 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.

The following list of criteria can be used to help evaluate whether an invention should patented. It can also help prioritize multiple inventions and 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.