Four Criteria For a Successful Patent

Michael Kapp asked:

One of the most difficult decisions for a small business is determining whether to pursue patent protection for a new product idea. Filing for even a single patent can be a financial burden for a small company as the initial cost of obtaining a utility patent is typically $10,000 or more. With most studies showing that 90% or more of all U.S. patents have no commercial value, the decision to pursue a patent should be made very carefully.

Four criteria should be considered in evaluating the decision to pursue a patent.

1. Economic Value

The product or feature concept must have the potential of generating profit margins several times over the cost of the patent application and lifetime maintenance. If you are not sure whether a market will develop for the product or if enough of the product can be sold to generate sufficient returns, then you may want to apply for a provisional patent. This application can be done for a small cost, and effectively “holds your place” for a year, giving you additional time to study the market before filing the full non-provisional patent.

2. It is Core (Can’t Compete in the Future without it)

The goal is to cover an entirely new concept, so that no one can participate in the new market/product category without infringing the patent. If the patent is for a new feature or modification to an existing product concept, then the feature must have a strong possibility of becoming a requirement in the market. In other words, future versions of the product are expected to be non-saleable without the new feature.

3. No Viable Alternatives

Will your patent represent the only viable alternative to implement the concept or feature? It is no use pursuing a patent if there are several other ways to achieve the same thing – unless, of course, you are planning to patent all of them. Make sure that you have a competent patent attorney help you with your claims – covering both apparatus and methods. You want to leave no viable alternative which will allow a competitor to participate in the market/product category without infringing the patent.

4. Infringement should be Easily Detectable

Even it you meet the first three criteria, you may still decide not to pursue the patent if you will not be able to tell if a competitor is infringing the patent. This is especially the case with software or firmware. Will you be able to determine infringement from simply observing the product in operation? If not, will you have a workable plan to obtain competitive products and determine infringement? Will you need to examine a competitor’s source code to determine infringement? If so, how will this be done and at what cost?

Preferably, all four criteria should be met to justify a patent application, especially in a small company where a patent application represents a major financial investment. Using these four criteria, you can increase the probability that your company will achieve a financial return on the patent.

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