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Filing a patent (or right) application is a strategic choice to be carefully evaluated. It is not always appropriate to proceed: if an invention is patentable, it does not necessarily mean that it will produce a product or a technology valid from a commercial point of view. It is, therefore, essential before filing an application to carefully evaluate and  analyse the possible alternatives. A patent may be difficult and expensive to obtain, administer and protect. Its application should be primarily based on the likelihood of receiving a commercially useful protection and, consequently, the likelihood of obtaining significant profits through its possible commercial use.

The factors to be considered when deciding whether to file a patent application for an invention (but the same applies for a utility model or a new plant variety) include:

  • is there a market on which to launch your invention?
  • are there similar inventions to that of your company?
  • is the invention useful for improving an existing product or rather to develop a new product? if so, is it in line with the strategy?
  • are there potential licensees and investors willing to help you launch the product on the market?
  • what will be the importance of the invention for your company and for competitors?
  • how easy is it to go back to the project of your invention starting from the product or from its design?
  • what are the odds that others have to invent and patent what you have invented?
  • do the expected profits, deriving from the position expected to be reached on the market, justify the costs of the patent?
  • which aspects of the invention can be protected by one or more patents?
  • how wide can this coverage be and to which extent can the latter provide a commercially useful protection?
  • how easy will it be to identify any violation by third parties of the patent rights held by you?
  • are you willing to invest time and financial resources to protect your patent?

Inventions and utility models

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