Cost-conscious strategies for patent application filings.

Timing and cost are two key factors involved in patentfiling decisions. This chapter explores mechanisms for delaying the high costs of filing a patent application as long as possible, so that additional information on an invention and evidence of its worthiness can be gathered. The efforts to minimize up-front costs are balanced against the potential need to secure viable patent rights at some point in the future. This chapter begins by walking through the stages of the publication process—from prior to submission, to after publication—and suggests cost-conscious patent-filing strategies that are possible at each stage. The focus is on delaying significant costs until the value of the invention is more certain. The chapter concludes with additional points to consider when making patent-filing decisions. HANDBOOK OF BEST PRACTICES | 21 product, an invention for which additional research may demonstrate some significant result, or an invention that may be licensed in the future.1 The cost-minimizing approach recommended in this chapter is intended for such inventions with questionable or uncertain value. The approach is not recommend for a blockbuster drug or an invention that represents the core of a company’s products. 2. dECISIonS, dECISIonS 2.1 No publications planned When the inventors plan no publications and there are no other reasons (such as concerns over competing groups) to secure a priority date, a company or university can enjoy the luxury of time. There is no need to do anything on the patent side so long as the invention will not be suppressed, concealed, or abandoned. Technical research and market evaluation may continue until the invention’s value is determined. Then a patent application may be filed, if appropriate. 2.2 Publication planned for a future date If there is significant time before publication submission, technical research and market evaluation may continue in the hopes that additional information will be gathered that can support CHAPTER 10.5