There are steps, e.g., patent searches, to reduce risk that inventors and companies can take at various stages of product development, i.e., before being accused of infringement, and later, if accused of patent infringement.
What follows should not be relied on as legal advice, since legal advice is very fact-specific and given only after forming a client-attorney relationship. In general, there are different types of searches that inventors and companies can use, often with the help of professional search firms, that can help a company reduce the risk of making and selling an infringing product or avoid trying to patent a product that is already in the public domain.
For a patentability search, i.e., the company has a product they may be interested in patenting, a company provides a search firm with a brief invention disclosure. The search firm searches all issued patents within the subject area, both unexpired (in-force) and expired. Depending on the technology, the search firm may review the claims of patents. All disclosures and drawing figures are reviewed. A patent attorney can then provide an opinion as to patentability (novelty) to the company.
For an infringement search, the search firm analyzes the claims of all unexpired patents within the subject area so that a patent attorney can counsel the company on infringement avoidance of in-force patents.
Freedom to Operate Search
In a typical freedom to operate search, the search firm analyzes the claims of all unexpired patents. They also review expired patents so that the attorney may advise the company which claimed technologies are now in the public domain and are therefore free to use. The patent claims are the focus in this type of search, not necessarily the disclosure.
State of the Art Search or “Patent Landscape”
A state of the art search can be conducted upon receiving a general product or business method description from the company. All issued patents are analyzed, expired or not. Because a product may have more than one invention associated with it, this search usually results in the citations of many patents and published applications. Though more patents are cited, the analysis is less comprehensive than if the search were for your use in determining patentability or infringement.
When You Are Informed You May Be Infringing Someone’s Patent
If a company does determine or is informed that it may be infringing another’s patent, it has a variety of options. One option is to “design around” the patent being asserted against it. Another option is to negotiate a license to use the patented technology by paying a royalty. Still another option is to attack the patent being asserted against it, through litigation in court or reexamination at the USPTO, or both. In this stage, again, a thorough search can help.