Patent Attorney, Colorado‘s Mark Trenner answers questions about your Patent Portfolio.

Link to Video: What is a patent portfolio?

Interviewer: Does the article recommend only filing patent applications for important inventions?Patent Attorney

Patent Attorney: No, actually the article correctly points out that market conditions can change, as can the products. Not filing a patent application for an invention just because the invention is not yet embodied in a product may lack foresight. And only filing a single patent application for a product and not following up with improvements can be equally short-sighted.

Interviewer: What does the article recommend companies do then to build a patent portfolio?

Patent Attorney: The article suggests asking the right questions to fully evaluate each invention. Evaluate invention disclosures from different perspectives, for example in light of the future products and the business goals of the company. Evaluate invention disclosures from a marketplace perspective, independent of the company, for example from a competitor’s view. Evaluate the strength of the patent – ask whether a strong patent will issue, and can the patent be enforced.

Interviewer: How do you know if the patent office will issue a patent for an invention?

Patent Attorney: There is no sure-fire way to know that the patent office will issue a patent, but a good technique is to start with a prior art search to determine the current state of the art and how that applies to the field of the invention. If the invention is in a crowded space, with a lot of prior art, then chances of success in the patent office are lower, and it may not even be worth pursuing a patent application for a particular invention.

For Part 4, see Patent Portfolio Q & A – Part 4 of 4