|About the Book|
Authored by Alan M. Koenck, Shareholder at Kinney & Lange, P.A.The opportunities and risks afforded by patents are often not completely understood by technology-based businesses. A granted patent for an invention allows the patent owner toMoreAuthored by Alan M. Koenck, Shareholder at Kinney & Lange, P.A.The opportunities and risks afforded by patents are often not completely understood by technology-based businesses. A granted patent for an invention allows the patent owner to prohibit others from making, using or selling that invention. When a technology-based business designs a new product, it is relatively common to consider the question of whether the new product includes any patentable inventions. This can provide an opportunity to create an exclusive right in the invention. However, it may be forgotten that the manufacturing and sale of a new product also creates a risk of infringement of the patent rights held by others. For significant new product releases, a freedom to operate or clearance analysis should be performed.A freedom to operate analysis may take a number of different forms. In some industries, it may be known that a limited number of parties are involved in the research and development of technology related to a new product being introduced. Therefore a search and analysis of patents held by those parties can be effective to evaluate the risk of liability for a new product release. In other industries, development is more random and widespread, or knowledge of the state of development of the art is limited, so that a comprehensive search of patents related to the technology of the new product is important for the analysis to be useful. Identification of potentially relevant patents may lead to a formal opinion establishing non-infringement of the patent(s) by the product, to a decision to alter the design of the new product, to embark on an effort to invalidate the patent(s), or a combination of these. A freedom to operate analysis should be an important part of any significant product release process, but for some businesses it is not. The first step is to understand how this kind of analysis fits in with the overall risk management policy of the business.The mechanics of the freedom to operate analysis are also important to reaching not just an answer to the question of patent infringement liability risk, but an accurate answer that is reasonable to rely on. Some approach this task by employing a relatively inexpensive patent searching firm to identify potentially relevant patents, and retaining a patent attorney after receiving the search results to write up the analysis based on the patents that were found. This approach misses some of the value that can and should be provided by the analysis. First, the search process requires a thorough understanding of the technical workings and construction of the new product. As searching is being performed, follow-up is often needed to clarify technical points. Tailoring the search to the product can be missed if the patent attorney doing the analysis is not involved at the searching stage. Second, for products that include patentable inventions themselves, there is good efficiency to be gained in the process of learning about the product as a part of the search and clearance analysis, since that same knowledge will be useful for the preparation of patent applications.