Patent Due Diligence – Before Filing
A Repeatable Due Diligence Analysis Prior to Filing
The decision to file a patent is an investment that – if it pays off – will have a huge benefit to a company. The best way to ensure that the decision process is well thought out is to have a due diligence process that helps make the decision less emotional and more quantifiable.
The due diligence is a roadmap for the business case of the patent and needs to follow the patent through its lifecycle.
The due diligence analysis should consolidate and organize the thought processes and data underlying the business decision for a patent.
One piece of the analysis can include the invention checklist, which is available here.
The due diligence should include some preliminary economic analysis of the invention. The due diligence should determine if the invention is a $3 improvement to a $10 product, or if it is a $0.03 improvement to a $1,000 product.
All of the due diligence practices should remove emotion and “gut feel” from the decision making process. Far too many patents are pursued to reward an inventor for a job well done or because the invention was “cool,” and not for the dollars and cents that might come of the investment.
The due diligence process is an iterative process. A checklist might be used to triage an invention and determine whether or not to investigate further, but then a thorough patent search should be performed.
The patent search may uncover related patents that would severely narrow the scope of a patent for the invention being discussed. Once the patent search is performed, a set of patent claims should be constructed and the checklist applied again to determine whether or not to go forward to file a patent.
This is an excerpt from “Investing in Patents” by Russ Krajec.
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