WHAT SHOULD BE PATENTED (AND WHAT SHOULD NOT)
A patent is an instrument of commerce. If patenting your invention will give you added commercial advantage that outweighs the cost of patenting, then patenting is indicated. If patenting will give no such advantage, we recommend you exploit your invention in other ways.
The first question to answer in deciding whether to patent an invention is whether a patent may be obtained for the invention in the first place. You are entitled to a patent for your invention, unless your invention just doesn't work (it is inoperative), or it is not new (it lacks novelty or is obvious). If the invention works, or if it seems that it will work when it is practiced, the invention is arguably operative. If there appears to be a substantial market for the invention and there is nothing like it out there, there is probably a strong enough argument for the invention's being new to justify considering patenting seriously. A patent novelty opinion from a patent professional can be helpful in answering this first question.
If it appears that a patent may be obtained for the invention, the inventor should then decide whether patenting the invention is justified. A number of factors can enter into this decision.
First, is the invention advantageous, that is, does the invention provide an advantage (e.g. better, faster, cheaper) over what was done before? The more advantageous a technology, the more patenting may be justified.
Second, is the invention differentiating, that is, would the goods or services provided by someone practicing the invention be different from similar goods or services provided by someone not practicing the invention? More differentiating technologies also argue in favor of patenting.
Third, is the invention customer-facing, that is, does the practice of the invention directly affect the customer? Improved manufacturing methods for existing articles, for example, are not customer-facing, while improvements in the articles themselves may be. More customer-facing technologies also argue in favor of patenting.
Fourth, would a patent directed to the technology be enforceable against infringers? This analysis focuses on whether the nature of the invention permits detection of infringement (improvements in manufacturing processes sometimes presenting difficulties here), and whether significant damages may be obtained from infringers (really going to the ultimate value of the technology). If a patent to the technology would be difficult to enforce, patenting may not be justified.
Fifth, will a patent to the invention have value in the future, when the patent finally issues? Patenting an invention takes time. In addition to the time to prepare and file the patent application, it can and often does take three years or more from the date a patent application is filed until a patent issues for the invention. Will the technology of the invention still be advantageous or even relevant when the patent issues? In some fast moving areas of technology, the answer to this question may be negative, and if so, patenting is not justified.
Ultimately, the decision to patent an invention is a business decision. Patenting is never inexpensive and should be pursued only when it makes business sense. If your technology is valuable, but patenting may not be justified, consider other ways to protect your technological advantage, such as the use of copyright and trade secret law, which may give you the IP edge you need without the expense of patenting.