8-point checklist for developing a patent strategy for a new invention

Prudent IP management requires developing IP strategies and coordinating them with business strategies. Here’s a fundamental sample checklist for developing a patent strategy for a new invention:

  1. Why is gaining a patent necessary? How will it serve the interests of the organization?
  2. Is patenting the invention worth the time and money? If we patent this invention, does it mean we will not patent another (is there an opportunity cost)? How is the value of the invention affected by a patent grant?
  3. Is gaining a patent grant worth the disclosure of the technology to competitors? When do we file for the patent? Is it prudent to disclose the technology (pre-market, re-test, seek peer-review, etc.) in the one-year window provided by U.S. patent law? Should we fund more research to broaden and refine possible applications before filing?
  4. In what jurisdictions should we apply for a patent?
  5. Who will draft the patent claims? What technical details are required and desired? What is best use of the invention? How much do we disclose?
  6. Has ownership of the invention and any related IP been legally established?
  7. What are the commercial possibilities (in-licensing, out-licensing, etc.) for the invention?
  8. What other IP related to the invention needs attention? What know-how and trade secrets should not be revealed in a patent application and what steps need to be taken to protect same? If it is software, what are the copyright implications? Will the invention require registration of a trademark?