This week I joined the Professional Services Office team at Asheville-Buncombe Technical Community College’s Small Business Center Incubator. Once per month I provide free one hour counseling sessions to clients of the Small Business Center to help these clients understand what their options are with regard to obtaining patent protection for their inventions.
Normally an invention disclosure includes the following types of information:
- Date of conception
- Description of problem
- Existing solutions to problem
- Detailed description of invention (i.e., new solution), sufficiently described so as to enable a person having ordinary skill in the field of the invention to make and use it
- Advantages of invention
- Perceived novelty of invention
An information disclosure with the above information should suffice for performing a patentability assessment, but because the patenting process is so expensive and time-consuming, it is also worthwhile considering the potential value of a patented invention prior to performing a patentability analysis. Some considerations of value:
- How easily would infringement be detected?
- How easily could a competitor work around the invention?
- Would inclusion of the invention into a new version of an existing product increase sales?
- How difficult is implementation?
- Would the invention be better served with a different form of intellectual property protection, such as maintaining it as a trade secret?
- Would inclusion of the invention in a product produce sufficient competitive preclusive effects so as to justify the costs of patent protection?
- Is there an existing market for this solution?
- What is the likelihood of further refinements?
These are just some examples of the dozens of considerations that can be pondered prior to determining to proceed with pursuing patent protection. Readers are invited to comment with further examples.