At Project Kickoff, the First Patent Task Is Not Filing Patents

Introduction

“We have just kicked off a new project and plan to file five patents. Is that enough?”

I hear this several times a month. My first reply is usually a question: what are those five patents supposed to protect? Have you worked that out?

The usual answer: not yet. Let’s fix the number first and fill in the details later.

That is the problem. Five is not necessarily wrong, and ten is not necessarily right. The order is wrong. The number is set before anyone knows what needs protecting.

1. “How Many Filings?” Is an Output Question, Not a Decision

“How many patents should we file?” is a question about output. Output matters. But it is not the first thing to ask on the day a project starts.

To answer “how many,” you first need to know “what to protect.” To know what to protect, you need answers to several earlier questions: how far others have already gone, where competitors have filed, which technical routes are blocked, and which countries the product will be sold in. Until those are answered, five or ten is just a number with nothing behind it.

There is a bigger risk. If the first patent question raised at the kickoff meeting is “how many,” the whole project’s IP work tends to be framed as an output task. Output tasks are easy to measure by volume. They are much harder to measure by whether the work was right.

The project then follows a natural track: reach the number, deliver drafts on time, report the count at year end. Whether those patents cover the technical points that actually matter gets pushed back. Sometimes nobody asks again.

The first question asked often shapes how the rest of the project is run.

2. Why People Ask “How Many” by Instinct

This is not necessarily a sign that anyone lacks expertise. Organizations naturally prefer things that are easy to count.

“How many filings” is easy to calculate: cost per filing, cost for five, whether the budget covers it, how much of the annual target is met. By contrast, “how far have others already gone?” or “how risky is this route?” are hard to turn into numbers and hard to put on a scorecard.

So in meetings, those questions tend to lose out to “how many.”

But what is easy to measure is not always what matters most. Much of the real value of patent work lies in judgments that do not turn into numbers at the start.

3. The Five Questions to Ask at Kickoff

Question 1: How far have others already gone?

This is not the same as asking whether a similar solution exists.

“Is there a similar solution?” looks at the prior art. “How far have others gone?” looks at where the technical route itself stands: who is working on it, how many generations they have been through, and what they have been changing recently.

If others are several generations in and you are starting from scratch, you need a clear answer to how you will catch up. If others tried several routes and then stopped, it is worth finding out why. The reason may be technical, or it may be cost or market.

The main value of this question is that it can change the project’s direction, or even rule it out.

The big savings in a project never come from filing two fewer patents. They come from finding out early whether the direction is worth further investment. What you save may be R&D spend, tooling cost, or a team’s year or two.

Question 2: Who are the main competitors?

Many companies know who their competitors are. Fewer go on to ask:

• How many relevant patents has this company published?

• Which technical directions are they concentrating on?

• Which countries and regions have they entered?

• Where are their applications published in the last few years heading?

Published patents are one of the most important public sources for reading a competitor’s technical direction. They are not a complete strategy document. Invention applications are generally published about 18 months after the filing or priority date, so what you see is always somewhat out of date. Some filings may also be defensive, reserve positions, or routes already abandoned.

Even so, reading filing directions, changes in applicants, and country coverage together over a period of time shows a great deal that product marketing and trade shows do not.

Question 3: Which technical routes are most crowded with patents?

The same technical goal can usually be reached by several routes. One may be mature, cheap, and familiar to the team, yet densely patented. Another may look less direct but face far fewer patents.

Route selection should then compare more than performance, cost, reliability, lead time, and team capability. It should add one more dimension: how much patent room does this route have?

A crowded route is not automatically closed. Whether there is real risk depends on the specific claims, legal status (granted, in force, or expired), and the target countries.

What is needed here is not a simple red light or green light. It is a map that sets technical routes against patent distribution. That map is not for the patent team alone. It belongs on the table when R&D chooses a route.

Question 4: Which markets matter most?

This sounds like a business question. In practice it sets the scope and cost of the patent work.

The reason is simple: patents are territorial. A patent granted in China has no effect in the United States, Germany, or Japan. Freedom to operate in one country does not mean the same freedom in another.

So at the start of a project, it is worth deciding early on three points: where the main sales markets are, where the product will be made, and where the main competitors are active.

That does not mean every country must be fixed before the first filing. The timeline has some built-in room:

• for inventions and utility models, the Paris Convention generally gives a 12-month priority period; for designs it is 6 months;

• through the PCT route, the final decision on national phase entry can be deferred in most countries to around 30 months from the priority date.

What matters is having a direction early, not fixing the country list on day one.

Likewise, for countries with no sales, no manufacturing, and no competitive or other strategic value, it is worth reviewing regularly whether to keep paying annuities to maintain patents there.

Question 5: Are there obvious obstacles on the route we plan to take?

After the first four questions, the focus comes back to your own plan.

Note the word “obvious.”

At kickoff, there is usually no need to take every candidate route to the depth of a formal freedom-to-operate (FTO) analysis. A more practical approach is to check first whether there are patent obstacles already visible on the route ahead. If a high-risk patent turns up, then run a deeper search and a claim-by-claim comparison on it.

Many serious risks can be spotted early. Others depend on publication timing and search scope, and only surface with deeper analysis later.

So the purpose of an early search is not to guarantee that every risk is found in one pass. It is to see what lies ahead while you can still change route.

4. What Changes After the Five Questions

Working through these five questions properly usually brings three changes:

• It may change the project’s direction. This is the biggest value, and the one most often underestimated.

• Route selection gains a dimension. “How much patent room is there?” sits on the table next to performance and cost.

• The budget has a basis. The company can see which technical points and which countries deserve the money.

Only then does the original question come up: how many patents should we file?

By this point the answer is usually much more natural. Knowing where competitors have filed shows which positions are worth contesting. Knowing which routes are crowded shows where to design around and where to build a portfolio. Knowing the key countries shows where foreign filing money should go.

The number of filings is the result of a decision, not its starting point.

Conclusion

Back to the opening question: when a new project kicks off, what is the first piece of patent work?

It is not signing an instruction to file five or ten applications. It is asking these five questions first:

• How far have others already gone?

• Who are the main competitors?

• Which technical routes are most crowded with patents?

• Which markets and countries matter most?

• Are there obvious obstacles on the route we plan to take?

None of these questions is complicated. Answering them properly still takes some search and analysis.

What they decide is where R&D goes next, where the patent budget is spent, and whether the project should continue as planned. The number of filings can wait until these answers are in. It will not be too late.