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Patent Application – Evaluating the patentability of an invention

You are under no obligation to conduct a prior art search before filing a patent application, and indeed, not all applications are preceded by such a search for want of time or lack of access to patent search facilities for cost or other reasons. For example, you may have no time to do so, if you identify patentable inventions only during a patent clearance procedure just prior to the launch of a product in the market. Nevertheless, if you are able to do a prior art search it may help you to decide whether or not to file a patent application, and whether or not to make further improvements to the invention for getting a stronger patent. You may do a prior art search in‐house, by using free on‐line patent and non‐patent databases and other paper‐based sources of prior art. Or, if you can afford it, you may use the services of a fee‐based value‐added patent search service provider.


a. When you evaluate the patentability of an invention, you would have to consider the following factors.

b. Is there a market for the invention, the technology or products incorporating it?

c. What are the alternatives to the invention, and how do they compare with your invention?

d. Is the invention useful for improving an existing product or developing a new product? If so, does it fit in with your company's business strategy?

e. Are there potential licensees or investors who will be willing to take the invention to market?

f. How valuable will the invention be to your business and to competitors?

g. Is it easy to "reverse engineer" your invention from your product or to "invent around" it?

h. How likely are others, especially competitors, to invent and patent what you have invented?

i. Do the expected profits from an exclusive position in the market justify the costs of patenting?

j. What aspects of the invention can be protected by one or more patents, how broad can this coverage be and will this provide commercially useful protection?

k. Will it be easy to identify infringements of the patent rights and are you ready to invest time and financial resources for enforcing your patent(s)?

For further information, please follow the next contents, explore the world of intellectual property and chances that intellectual property may bring to your enterprise.