A freedom-to-operate opinions involve an analysis of the results of a clearance or non-infringement patent search to determine whether a particular product, service, or group of products or services, if commercialized, would infringe patents owned by others, or stated another way, whether the client has the freedom-to-operate regarding the product or service at issue. This is different from a patentability search, which seeks to determine whether or not an idea is new and could be protected applying for a patent.
What is involved in a Clearance or Non-infringement Search?
A non-infringement search begins by first considering in what jurisdiction the product or service will be sold. For the purposes of this article we will consider the scenario where the product is sold in the United States. When the product will be sold or the service operated in a foreign jurisdiction, such as in Europe, foreign attorney’s assistance is likely necessary.
Next the search scope is determined by considering the features of the product or service at issue. Then a patent search is performed comprising the search scope previously determined. Then during the patent search relevant patents are flagged for further analysis.
The flagged patents are then checked to see whether they are expired due to age or due to a failure of the patent owner to pay a maintenance fee. Maintenance fees are due at 3 ½, 7 ½, and 11 ½ years after the patent issues. Expired patents generally cannot be infringed, except in the case that the patent owner timely petitions to revive a patent after failing to timely pay the maintenance fee. However, in such a case of revival, the law provides certain protections, called intervening rights, to someone that makes substantial preparations to manufacture, use, offer for sale, or sale while the patent was expired (after the 6 months grace period).
Of the flagged patents that are not expired beyond the grace period, a detailed analysis occurs to determine whether such patents pose an infringement risk to the product or service at issue. The detailed analysis involves interpreting the meaning of the claims and the terms within the claims. The interpretation includes reading the specification of the patent and reviewing the drawings. It can include reading the file history of the patent application that corresponds to the subject patent to determine whether anything that occurred during the prosecution (the interaction between the patent applicant and the Patent Office) of the patent application will shed light on the meaning of any terms in the claims. The interpretation may also include reviewing the prior art cited in the subject patent. Further steps may be taken during the analysis, such as, performing further prior art searching to determine whether prior art limits the scope of claim terms at issue.
The closer the patent claims are to the product or service at issue and the more ambiguous the claim terms are, the more time it is likely to take to determine whether the patent claims present an infringement risk.
Invalidity Search and Analysis
In some cases, the product or service does not avoid one or more claims of a patent after interpretation and analysis of the terms of those claims. In such cases, an invalidity analysis may need to be performed. An invalidity analysis seeks to determine whether the Patent Office made a mistake and granted the patent owner more protection that they had a right to in view of the prior art (e.g. previous inventions and publications). In other words, an invalidity analysis asks: did the Patent Office grant the patent owner protection over an idea that is not new? An invalidity analysis requires further searching or consideration of the prior art to determine whether claimed features in the patent are in-fact not new in view of that prior art.
Even if a patent attorney determines that one or more claims of a patent are invalid, there’s no guarantee that the patent owner will agree. Therefore proceeding forward with a product that would infringe a claim that a patent attorney has opined is invalid, still presents a risk that the patent owner will sue based on that patent.
A clearance search is used to determine whether you product is likely to infringe another’s patent. An invalidity analysis considers whether the Patent Office made a mistake and granted the patent holder more protection than they were entitled to receive. These steps can assist you in determining whether there is a patent risk in proceeding with the sale of a product or service within the United States.