Prioritizing Your Patent Applications

AuthorDonald S. Rimai
ProfessionRecently retired from Eastman Kodak where he worked as a researcher and intellectual property manager in digital printing and adhesion science
Pages91-106
91
What is the Dierence between Prioritizing Inventions
and Prioritizing Patent Applications?
In Chapter 6 we discussed the value of and factors involved in prioritizing
inventions. In this chapter we will be discussing prioritizing patent applica-
tions. Are these not one and the same? e answer is that they are not, and,
while there is some overlap between both prioritizations, they are distinct
and done for dierent reasons. To understand this, let us review what is
meant by an invention and a patent.
When developing a product you have to solve numerous problems.
Some solutions involve integrating commonly held pieces of information.
at information may be totally in the public domain or it may be pro-
tected by patents owned by others. Other solutions are novel and nonobvi-
ous and constitute inventions. Some problems are more signicant than
others. For example, a problem for which there appears to be only a single
solution that is critical to the customer acceptance of your product, drives
7
Prioritizing Your Patent
Applications
92 A Guide for Implementing a Patent Strategy
costs, or is mandated by regulations, is extremely important and consti-
tutes a critical challenge. Other problems may be less pressing or may have
multiple viable solutions.
In yet other instances, it may simply be premature to attempt to solve a
problem. Even in cases where the problem is anticipated, specic underly-
ing factors that may impact its solution may not yet have been determined.
In other instances it may not be the best use of resources to address a prob-
lem at the present, but may be better to postpone solving it.
In all cases, it is important to lay out a roadmap of when problems must
be solved if, for no other reason, than to ensure that the project is progress-
ing in a time frame that makes business sense. An additional benet is that
it allows you to repeatedly assess the environment in which your product
will compete and to ne tune its attributes, or even totally abandon it, as
market forces dictate.
In other words, prioritizing inventions is a way of tracking what has to
be accomplished and by when. It is part of the technological development
roadmap that needs to be implemented to ensure success.
In contrast to an invention, which is a technical solution to a problem,
a patent is a legal document, granted by a government issuing author-
ity that provides legal protection to the owner of the patent. In itself it
does not comment on the importance or signicance of the invention.
A patent merely states that the invention described therein is a techni-
cal solution that is nonobvious and novel to a problem. In contrast to
an invention, which presumably is directly related to the value of your
proposed product, a patent’s value is determined by how much someone
else needs access to the claimed technology. A patent does not, in itself,
determine the marketability of a product.* In fact many highly success-
ful products, such as Coca Cola syrup, are not covered by patents. You
do not need a patent in order to market a product. Conversely, as previ-
ously stated, having a patent does not grant you the right to market your
product.
With that being said, a properly constructed patent portfolio can add a
lot of value to your company. Specically, it can give you a monopolistic or
technologically advantageous position for marketing your product. It can
also generate revenues for your company through licensing fees obtained
* It is a well-known marketing ploy to describe something as so signicant or innovative or
superlative as to be awarded a patent. at is, of course, strictly for public consumption and
is irrelevant to the importance of the proposed product.

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