I have had a number of clients worriedly ask me, “How do I know if I’m infringing on another inventor’s patent?” This is a serious concern. There have been instances in which an individual or company has spent great deals of money funding the development, production, and marketing of a product, only to be hit with a patent infringement lawsuit and have their entire business wiped out.
Keep in mind, patent infringement does not mean that you intentionally stole someone else’s idea. You may very well have come up with your product on your own, without outside inspiration. But if another person had the same idea and patented it before you—or patented a component utilized by your product—you will be committing patent infringement if you attempt to market your invention. Before you invest in your product, it is wise to make sure you aren’t committing patent infringement.
A “freedom to operate” search can identify whether your invention infringes on another inventor’s existing patent.
To determine whether you’re risking infringement, you need to conduct what is known as a “freedom to operate” search, or FTO. An FTO search breaks your invention down into its component parts and asks two questions:
- Are any of these components already patented?
- Are any of these components combined in a manner that is already patented?
It’s very common to discover that a component is patented. But don’t panic. This can be easily remedied by simply buying the component from the patent owner, or someone with a license from the patent owner. This eliminates the patent owner’s ability to sue you for infringement due to the doctrine of “patent exhaustion.”
In the past, patentees used to go to great lengths to patent their products—one particularly clever method was to patent the process by which their product was used. This meant that you couldn’t turn to third parties to replace broken or exhaustible components, such as the ink in an ink cartridge.
However, the Supreme Court recently ruled in a court case filed against Lexmark (the printer company) that patenting methods of product use doesn’t circumvent patent exhaustion. This means that when you buy a product, you buy a license to all of the patents covering that product. In the case of Lexmark, this means that when you buy an ink cartridge, you automatically license the patent covering the process for refilling the cartridge. A single product purchase exhausts all relevant patents.
But, what if you have no idea who has the patent or a license to the patent?
In this case, unless you custom order a product, all products regularly sold by merchants in the United States come with a warranty indicating that the product is not infringing the intellectual property rights of another party. So, you can sue the seller for selling you infringing goods. The takeaway from this is that if you suspect that the components you want to use might be infringing on a patent, source them from American companies that you deem likely to be around for a while (and not disappear into the night and leave you hanging when the IP owner comes calling).
In short, a freedom to operate search is a great way of identifying patents that you’ll need to license or components you’ll need to source in order to license the relevant patents. However, FTO searches also isolate other points of risk—that require more inquiry, such as an “infringement opinion,” in order to get more information. But an FTO search is all you’ll need to answer basic questions about identifying patented components and how to protect yourself from infringement claims when producing and selling your product.
For assistance in conducting a freedom to operate search, please contact us today.