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Patent Filing Analysis Checklist

Andrew J. Sherman, Partner, Dickstein Shapiro Morin and Oshinsky LLP

The patent application and registration process can take from two to five years from the date of filing to the final registration date and can be very costly for entrepreneurs and emerging growth companies.

As a result, before attempting to obtain a patent, conduct a cost-benefit analysis to determine if the benefits of being able to exclude others from making, using, or selling the invention outweigh the significant costs of prosecuting and protecting the patent.

As part of this analysis, consider these ten critical factors:

  • Your company’s stage of growth
  • Your company’s position in the marketplace
  • The projected commercial value of the invention
  • The strength and scope of the claims that will ultimately be granted by the U.S. Patent and Trademark Office (USPTO)
  • Out-of-pocket expenses to obtain the patent, including legal fees, advertising, marketing and re-tooling costs
  • The invention’s proximity to existing patented and non-patented technology (from an infringement and a commercial development perspective)
  • The company’s ability to exploit the invention during the timeframe of exclusivity granted by a patent
  • The market value (and technological/commercial relevance and utility) of the invention two to five years down the road after completion of the patent application process
  • The company’s ability to enforce the patent following registration (given the high cost of patent litigation) and
  • The availability of adequate alternatives for protecting the invention, such as state trade secret laws.

© 2006 Andrew J. Sherman. All rights reserved.

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