Six Questions That Determine Whether You Should File That Patent

I’ve sat through hundreds of IP strategy sessions with founders. The pattern is predictable: they walk in ready to file a patent. They’ve built something innovative, investors are asking about IP protection, and filing feels like the responsible next step.

But here’s what I’ve learned after years of this work: the default answer shouldn’t be “yes, let’s file.”

It should be “maybe not.”

Patents are tools, not trophies. They’re expensive, time-consuming, and static in a world where your product evolves constantly. Filing without strategy is like buying insurance on a house you might not live in next year.

So before any founder files, I ask six diagnostic questions. These questions have saved clients tens of thousands of dollars and prevented weak patents that create zero competitive advantage.

Question 1: What’s the primary business objective?

Are you trying to control market share? Increase valuation for fundraising? Create licensing opportunities? Deter competitors?

Different objectives require fundamentally different patent strategies. Claim scope, filing jurisdictions, portfolio structure—everything changes based on your goal.

I’ve seen founders cite vague objectives like “investors expect it” or “everyone in our space has patents.” These aren’t business objectives—they’re checkboxes. The real question is: what specific competitive or market position are you trying to create? Once we identify that, the entire filing strategy becomes clear. Are you defending against known competitors? Creating licensing opportunities? Building valuation for acquisition? Each answer leads to a completely different approach in claim scope, jurisdictions, and portfolio structure.

Question 2: Have you publicly disclosed the invention?

This question catches more founders off guard than any other.

Public disclosure destroys patent rights. Demos at conferences. Pilot programs with customers. Press releases. Product launches. All of these can eliminate your ability to file—or force you into rushed, weak applications.

I had a conversation with a founder building a home improvement tool. During our strategy session, I learned he’d been publicly displaying and selling the product for over a year. US patent protection was impossible. No significant improvements had been made since launch.

My advice? Forget the patent. Focus on first-mover advantage and brand recognition. Yes, competitors might enter the space and benefit from his success. But he had a head start and could capture significant market share.

That $20,000 he would’ve spent on a doomed patent application? We redirected it to product development.

Question 3: Which technical aspects provide actual competitive advantage?

Not every feature is worth patenting. Strong patents protect leverage points—architectures, workflows, or system-level advantages that competitors can’t easily avoid.

This question separates “interesting technology” from “strategically protectable value.”

I ask founders to identify what makes their product defensible in the market. Often, the feature they’re most excited about technically isn’t the one that creates business moat. The real advantage might be in how components interact, or in a workflow that’s difficult to replicate.

Question 4: Who are your competitors and how do they protect technology?

Patent strategy doesn’t exist in a vacuum. Understanding your competitive landscape shapes claim breadth, helps identify white space, and determines whether your patents will actually influence behavior.

Sometimes your product doesn’t change, but you see an opportunity for defensive filing. You notice a competitor moving into a space void of patents. A few strategic patents in that space can become a gold mine for licensing.

I once represented a company with nothing but strategically prepared patents. Every single one had a key inventive feature in the independent claims. They sued big players who initially refused to settle and filed reexamination on all the patents.

We successfully defended the patents on reexam. The big players agreed to a licensing deal worth over $100 million. The client’s valuation jumped significantly after that.

Question 5: What design-arounds could competitors use?

If competitors can easily design around your patent, it won’t provide leverage—even if it’s granted.

As patent attorneys, we’re experienced in identifying design-arounds. I pose this as a strategic question during IP sessions. Even if founders haven’t thought about it, the question makes them think like a competitor in real-time.

Often, a founder will say “yes, that alternative is actually possible.” Even though it’s not their current implementation, it’s worth protecting from both a design-around perspective and for future licensing deals.

This question improves claim drafting and reveals whether broader protection is possible. Sometimes it shows that a patent isn’t worth pursuing at all.

Question 6: How does timing align with your roadmap?

This is the question most founders never consider. And it’s critical.

Patent strategy that’s misaligned with product launches or fundraising milestones fails during diligence.

I ask founders to identify their 18-month product roadmap. Then I map a patent filing strategy that matches that roadmap. At this stage, I’m creating a timetable for possible filings.

Then I apply the first filter: Does each filing provide strategic advantage? Does it serve the business objectives we outlined at the beginning?

If it doesn’t, we drop it.

If it does, we move to a focused patentability search. After reviewing the prior art, I ask again: Can we get reasonable protection that still provides market advantage?

If no, we drop it. If yes, we proceed with drafting.

This double-filter approach prevents wasted spend on patents that won’t create leverage.

When the answer is “don’t file”

In another recent conversation, we discovered the founder’s idea was best protected as a trade secret. Reverse engineering wouldn’t have been possible. Trade secrets are cheaper and last as long as you can keep them secret. Patents cost significantly more to obtain and only last 20 years.

The founders who get this right treat IP as a living strategy, not a checkbox. They communicate routinely with their patent attorneys. They bring us into product planning meetings. They do quarterly portfolio reviews to ensure the strategy matches both their current product and what they’re seeing from competitors.

At the end of the day, patents are about framing. They help you tell the story that your product is unique and defensible. When done strategically, they place you on a different level for funding, valuation, and exit.

But strategy comes first. Always.

If you can’t answer these six questions clearly, you’re not ready to file. And that’s not a failure—it’s strategic thinking.