A Framework for Identifying Inventions Worth Patenting

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The selection of an invention for patenting must be based on the business goals and needs of the client. This mandates that the prosecutor take the time to understand the patentee’s business, and not merely its technology – the mere technical ‘coolness’ of an invention is not a sufficient reason for patenting it.

The patentee’s business is typically focused around some number of markets or market segments. Identification of these markets is necessary to determine who are likely competitors, and what are types of products or services they offer. This informs how to structure different claims for products, systems, or “components,” to better ensure infringement by different parties.

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Fenwick & West LLP on:

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