Patent Strategies : Single Invention

These suggested strategies are to help you decide which direction to take with your patenting activities.

1. For the organized

File a regular application. You know exactly what your invention is and all the possible variations. You have the time to prepare a quality application, including a detailed explanation and clear drawings, and you have the time to review and optimise the claims you want to make.

2. For the spendthrift

File a provisional application. This is advisable if you want to delay expenditure. However, you will probably want to file a regular application at some point claiming the benefit of the provisional application, so total expenditure will be a little higher than if you had just filed a regular application. By then, you may have generated more cash, either through sales or investment. Be very careful not to consider provisional applications as throw-away applications. They must be written to certain standards in order to be fully effective against competitors' patent filings.

3. For the impatient

File a regular application and pay the additional fee for expediting the examination of the patent. This can speed up the grant of a patent from about 3 years to less than 1 year. The sooner you have your patent granted, the sooner you can receive licensing fees or legally exclude others from making or using your invention.

4. For those in a panic

You're pretty sure you have an invention, but you need to publicise it in the next few days, either at a trade show or to a group of investors. You're worried that someone will copy it and file their own patent application, and take all the revenues that go with it. You don't trust NDA's or can't get them signed and you've got a thousand other things to deal with. You can fax in a provisional application in some countries, and complete it later. Once this is done, you can file in other countries as required.

5. For doubtful inventions

File a regular application in the US. This is the easiest jurisdiction in which to obtain a patent. If you are interested in filing a patent application in other countries, you can delay costs as much as possible until you receive the examination result for your US patent application.

6. The world is your oyster

File a PCT application. You would like to receive patent protection in several countries. Although patenting in numerous countries can be very expensive, the PCT application is the best way to proceed, and saves or delays some of the expenditure.

Patent Strategies : Multiple Inventions

These suggested strategies are to help management decide which direction to take their companies regarding patent protection.

7. Start-ups

File patent applications on everything. It's a quick way to create tangible assets for your company, and can add significant strength to help you survive against more established companies. If cash flow is a problem then filing provisional applications would be a good way to go.

8. Mature companies

Collect invention disclosures of all inventions and then have an internal panel regularly assess: the size of the market opportunity the invention represents; the feasibility of building a product embodying the invention; whether the invention aligns with the company's business plans; whether the invention blocks a potential competitor; and whether a patent is likely to be granted.

9. Companies seeking acquisition

File patents on everything, since each patent application or patent represents an added value to the company.