Criteria & Mistakes

Major Factors to Determine the Relative Worth of Patenting an Invention

If a patent application were filed for this invention, will it be practical to –
1. Easily determine if there is actual infringement by examining another company’s products?
2. Enforce the patent for many years (i.e., is the pace of technological change not too rapid)?
3. If we patent this invention, will it cover enough product areas to be worthwhile?
4. If we patent this invention, will it be worthwhile for generating revenue?
5. If we patent this invention, will the implementation infringe other patents and incur royalties?
6. Is the invention defined well enough to be worth a patent application now?
7. Is there enough invention information for enablement – in other words, could a functional product be built with the information known at this time?
8. Are we about to ship a product incorporating an embodiment of this invention?
9. Does this invention have several potentially valuable alternative embodiments?
10. Is the invention worth foreign patents?
11. Can broad claims be made for this invention (or is there a lot of close prior art now?)
12. If we don’t patent this invention, is it likely that our competitors will patent it?
13. If we don’t patent this invention, how difficult would it be to keep it as a trade secret instead?
14. If we don’t patent this invention, do we have other patents that cover most of the technology?
15. If we don’t patent this invention, do we have other IP rights that cover most of the technology?
16. If we don’t patent this invention, will it leave a significant current product field unprotected?
17. If we don’t patent this invention, will it leave a significant future product field unprotected?

46 of the Most Common Patenting Mistakes
1.   Using employer resources or time in developing the invention
2.   Not getting ownership clearance from the employer
3.   No search or an insufficient search
4.   Insufficient documentation of who the inventors are
5.   Adding or deleting inventors without legal justification
6.   Prematurely adding inventors
7.   Premature publication
8.   Premature commercialization
9.   Using invention developers to do searches, patent drafting, or patent filing
10.  Using invention developers for patent marketing
11.  Believing that a prototype is a prerequisite before filing
12.  Not filing a patent application promptly
13.  Filing a patent application prematurely when the commercial embodiments are not clear
14.  Not filing a petition to make special when appropriate
15.  Relying on another entity to control and pay for the filing of a patent application
16.  Filing a foreign patent application before filing a US application
17.  Filing a patent application for what is better kept as a trade secret
18.  Not considering the need for trademark, copyright, or trade secret protection
19.  Inadequate budgeting for patent filing, prosecution, and maintenance costs
20.  Inadequate budgeting for patent enforcement
21.  Filing a patent application that lacks enablement
22.  Filing a patent application that does not teach the best mode
23.  Filing a patent application that discloses much more than what is claimed
24.  Filing a patent application that discloses far too little of what should be claimed
25.  Filing a provisional application – but missing the one-year deadline to file a utility application or a PCT application
26.  Filing a utility or PCT patent application at the last minute just before the one-year deadline
27.  Not including a non-publication request when filing a US utility patent application
28.  Not rescinding a non-publication request on or before the filing of a foreign or PCT application
29.  Not checking the status of the application
30.  Filing a patent application with specification terminology different from the claims
31.  Filing a patent application with specification elements not matching the drawing elements
32.  Filing a patent application with too many claims
33.  Filing claims that are too narrow
34.  Filing claims that are too broad
35.  Not filing any IDS during the application
36.  Not filing flowcharts to support method claims
37.  Not filing system block diagrams to support system claims
38.  Filing drawings with inadequate element labeling
39.  Arguing with the Examiner or sending Responses that offend the Examiner
40.  Not responding promptly and appropriately to USPTO communications
41.  Not responding adequately to PCT application restriction requirements
42.  Not filing appropriate PCT application amendments to the claims and/or drawings
43.  Not keeping track of PCT deadlines
44.  Not verifying or paying for the issue of US utility patents
45.  Not keeping a current address and telephone number with the USPTO or patent practitioner
46.  Underestimating or overestimating the value of the patent(s)

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