Patent Protection Doesn’t Mean Freedom to Operate

I’ve recently had several discussions with a client whose primary concern was his ability to make and sell his product, as well as to prevent others from stopping him from making and selling his product. His concerns, while seemingly simple and certainly reasonable, are actually quite nuanced in their meaning and requiring significant complexity to answer.

His first question, his ability to make and sell his product, is one frequently asked by both start-up businesses and multinational corporations whenever they bring a new product to market, particularly one that includes new elements or features than products they have offered before. For those with deep enough pockets, a Freedom to Operate (FtO) opinion letter from an attorney is an excellent way to, first, gauge the risk of infringing on a patent that is currently enforceable, and, second, reduce potential damages in the event the product is determined to infringe on a patent. Prior to drafting an FtO opinion, the attorney will perform a search of patents to determine which, if any, have claims that the product may infringe upon, as well as determine if the patent is currently enforceable. A patent may be presently unenforceable if has expired, if the maintenance fees have not been paid, or has been invalidated in proceedings after issuance. Additionally, having the FtO in hand can serve as substantial evidence that the maker of the determined-to-be infringing product did not infringe willfully, as they had a good-faith basis that their product did not infringe on a given patent. This function is also performed by a so-called Non-Infringement Opinion. By having an FtO produced, a product maker can increase their confidence in their ability to make their product, identify potentially problematic patents and design around them, or identify unavoidable risk of infringement and react accordingly, such as by seeking a license from the patent holder.

His second question, preventing others from stopping his making and selling of his product, is more complicated to answer, and various strategies are available. First, going on the premise that there is not a patent, patent application, or piece of non-patent literature out there that describes his exact product, by offering his product for sale or publicly disclosing his product, the client may commit to the public domain his invention. Under the AIA First-to-File system, if no inventor has filed an application on the invention by the date of the disclosure or offer for sale, no application may be filed, according to novelty and obviousness requirements. However, there is a real possibility that, due to the realities of time constraints upon Examiner’s in the USPTO, an Examiner of a subsequently-filed application including claims that the client’s invention may infringe upon may not locate the client’s public disclosure or offer for sale, and may even allow the claims, giving rise to the possibility of the now-patentee asserting the client’s invention infringes his patent, in spite of the patent’s invalidity.

There are methods to address the above-described situation, but they are complicated, and in most cases expensive. These include monitoring published patent applications, identifying those that may already include claims directed toward the invention, or are strikingly similar and may include covering claims at a later date, and making a third-party submission of prior art in the application. Certainly a time-consuming and expensive proposition. This is not to say that this strategy has no fit. For the right client in the right technology field, this can make lots of sense to make sure the Examiner has the best art in front of them. However, for many smaller clients, such a strategy is financially unfeasible. What’s more, there is no opportunity for the acquisition of intellectual property, only potentially avoiding others obtaining potentially invalid patent protection.

And so, there comes to a light a dual benefit of filing a patent application. First, and foremost, is the prospect of obtaining patent protection, which has multifarious benefits to a great variety of entities. A secondary benefit is, even if a patent is not ultimately procured, you have put into the public domain, by virtue of the publication of the application, your invention. More importantly, you have put your invention in the database that is always utilized by examiners in evaluating subsequently filed patent applications. In this way, you significantly increase the likelihood of an Examiner finding your invention and giving it due consideration in the evaluation of later-filed applications.

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