In this article, we understood what are patents and the advantage patent owners enjoy over others working in their technical domain. Let’s see things from another perspective and imagine you are going to launch a product (or service) commercially but you do not know what is patent infringement and how to avoid patent infringement. You may want to take preventive measures because if patent infringement is proven after your product hits the market, you may need to pay a percentage of your revenues (called ‘royalty’) to the patent owner who alleges patent infringement.
To find whether your product infringes on a patent, let us first understand what is patent infringement. As we now already know, an important purpose of getting a patent is to protect an invention by excluding others from making it, using it, selling it, importing it or offering it for sale without the patent owner’s consent. Any such exploitation of the patented invention without the consent of the patent owner is called patent infringement. As an example, let’s assume that you have a technical solution or a product that you are going to commercialize. In this event, some one else with a patent on that product (or your technical solution) could approach you after your product launch (and sale) to solicit royalty (licensing fee) from you, since you are exploiting their patent without their consent.
Well, such a situation cannot always be completely eliminated but its probability can be minimized to a great extent if, before launching your product, you can conduct a thorough patent search (known as a Freedom-to-operate search in IP world). The objective of doing so is to find patents which have claims that directly map to the features of your product. This precautionary effort can make you aware at early stages of your product launch, regarding any patent risks that you may face later on.
Now we know that FTO search is used to find any third-party patents on which your product may infringe. An important aspect to remember here is that patent infringement occurs when a product feature directly maps to the ‘claims’ of a granted patent. For example, the very popular feature of “slide to unlock” on smartphones directly maps to this patent (refer claim 1 in the linked patent) and thus, this feature is considered infringing on this patent.
Now that you know what is patent infringement and how it can affect you in the above situation, it logically follows that you would want to review every patent that is a potential risk and take precautionary measures accordingly. The simplest starting approach you can take as a beginner is to use this article in conjunction with the points covered below to search for patents by using relevant keywords (or patent classes).
1. Patent is a territorial right – Any patent in any jurisdiction is an enforceable right that can be exercised only within the confines of that jurisdiction. For example, a product launched in U.S. (or any other country) cannot be considered infringing on a patent granted in Australia (or any country). This means if a patent owner has a patent granted in Australia, they can only enforce their patent within Australia and not outside. In fact, this is exactly why patent owners file patents in different jurisdictions separately and there is no such thing as globally enforceable patent. Therefore, while searching you need to only stick to the patents that are granted in jurisdictions of your interest. This saves time and effort during your search.
2. Independent claims must map entirely– An essential criteria of patent infringement is that at least one independent claim (any one) must map to the product features. If any of the dependent claims map to the product features without the independent claims getting mapped, it is not considered patent infringement. Another aspect to consider is that each feature of the independent claim must map to the product, for infringement to occur. If you refer to the ‘slide to unlock’ patent above, you will notice that the independent claim 1 of the patent maps entirely to the actual slide to unlock feature you use on your smartphone to unlock the phone. Moving on, if as a product owner, you can ascertain that any feature of the independent claim does not map, it is not considered patent infringement (but this can be subjective).
3. Granted patent – Since only ‘granted’ patents can be enforced as per patent law in any country, any legal action can be taken by a third-party against you (as an infringing product owner) only if their patent is granted. Therefore, you should pay attention to the legal status of a patent before concluding that your product infringes on a patent. If a patent application is yet to be granted and its claims map to your product, it is likely that the scope of its claims would change during patent prosecution (and diverting from your product scope. However, you can watchlist such patents to track any change in their scope until (and if!) they get granted. This may affect your product strategy. If the patent is abandoned or expired (even after grant), you need not be concerned and can discard that particular patent from your consideration.
4. Exhaustive search– A great aspect of patents is that they are published documents. This means that you will find most of the patents in public domain at one or another search tool. To make the search exhaustive though, you should try multiple search tools including Google Patents, Freepatentsonline, USPTO search tool, Espacenet, Patentscope and so on. If the budget permits, you can even try out a paid search tool as well for better patent coverage where high stakes are involved. However, no search completely eliminates the risk because the search tools have coverage limitations with respect to the jurisdictions and the number of patents covered. Additionally, most patent offices globally, publish patent applications after a few months from filing. Therefore, it is likely that at the time you are searching, a target patent has not been published and thus, could not be found but it does not mean that there is no infringement. However, doing an exhaustive search and repeating it periodically can minimize the risk of infringement to a great extent.
All the above points translate to shortlisting at least one granted patent, which has at least one independent claim that completely maps to the product in consideration, in a jurisdiction of interest (where the product is going to get launched).
During your review of the patents that show up during search, you can shortlist patents using the above criteria and find the most relevant ones based on their claim features. These are the patents that pose patent infringement risk to your product. Remember that merely adding new features to the product or believing that you already have additional features in the product may not help you escape infringement as long as the infringing features are already present in the product.
Once you have done the above exercise, study the patents closely to find out any features in the independent claims that do not map. If that is not possible and you are stuck with a granted (enforceable) patent that does map to your product, you can try to modify your product features such that the product does not infringe on the shortlisted patent(s). Alternatively, you can approach the patent owner to strike a deal to license the patented invention. There are many more remedies available but I would avoid digressing from the scope of this article.
Like analysis of all market risks before launching a product, patent infringement risk also should be given high importance and all necessary due diligence should be done to minimise it.
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Disclaimer: Even though the above approach can be used for doing a patent check, it is highly recommended to consult a patent attorney to estimate patent risks before commercialising a product or a service.
