When developing a new product or system, it’s wise to consult an IP attorney before launching your product, particularly if you are in a competitive or crowded space. In my experience as a former big firm lawyer and associate general counsel of a public company, one of the most effective ways to reduce the risk of patent infringement is through a detailed prior art analysis followed by a non-infringement opinion from an experienced IP attorney who has extensive knowledge of patent law. The patent lawyer can provide advice on how to develop your solution while respecting other’s IP rights. This analysis can help you avoid litigation, and if litigation is inevitable due to competitive pressure, the planning can help you reduce the risks and costs of litigation.
What is a patent clearance search?
A patent clearance search is a type of prior art search that is conducted to determine whether a proposed product or process infringes on any existing patents. The search is typically conducted by a patent attorney or agent and is used to identify any patents that may pose a risk to the commercialization of the proposed product or process.
A patent clearance search typically includes:
- Identifying relevant patents: The patent attorney or agent will conduct a search of existing patents and publications to identify any patents that may be relevant to the proposed product or process.
- Analyzing the proposed product or process: The patent attorney or agent will analyze the proposed product or process to determine whether it infringes on any of the identified patents.
- Preparing a report: Based on the analysis, the patent attorney or agent will prepare a written report that summarizes the results of the search and provides an assessment of the risk of patent infringement.
- Providing recommendations: Based on the results of the search, the patent attorney or agent may provide recommendations for how to proceed with the proposed product or process, such as by modifying the product or process to avoid infringement or by obtaining a license from the patent holder.
The patent clearance search is typically used by companies and individuals who are looking to develop and commercialize new products or processes and want to ensure that they are not at risk of patent infringement. It can also be used to evaluate products or processes that a company intends to acquire.
In addition to legal issues regarding the validity of patents, the results of a clearance search will also tell you whether there are any patent claims out there that could potentially stop you from producing your product (or using certain methods in its production). This is important because if someone else has patented something similar to what you’re creating—even if they don’t feel like suing—the existence of their patent means that other people might think twice about doing business with you at all.
Clearing a product for sale early can prove to be advantageous. A proactive approach to product clearance will help to avoid costly product redesigns just before the product launches. A good way to clear a product is to do a first landscape search. This will allow you to determine the scope of the product’s technical areas. You can then monitor the progress of product design and update your search accordingly.
As the product gets closer to launch, you can focus your clearance efforts with freedom-to operate analysis. An updated search should be done throughout the product’s lifecycle.
What is a non-infringement opinion?
A patent non-infringement opinion is a legal opinion issued by a patent attorney or agent that states that a particular product or process does not infringe on any existing patents. This type of opinion can provide a level of protection for companies against patent infringement lawsuits.
A patent non-infringement opinion is typically requested by a company that is developing a new product or process and wants to ensure that it does not infringe on any existing patents. The opinion is based on a thorough review of the relevant patents and an analysis of the product or process in question.
The process of obtaining a patent non-infringement opinion typically includes:
- Identifying the relevant patents: The patent attorney or agent will conduct a search of existing patents and publications to identify any patents that may be relevant to the product or process in question.
- Analyzing the product or process: The patent attorney or agent will analyze the product or process in question to determine whether it infringes on any of the identified patents.
- Preparing the opinion: Based on the analysis, the patent attorney or agent will prepare a written opinion stating whether or not the product or process infringes on any existing patents.
- Providing a defense in case of a lawsuit: If a company receives a patent infringement lawsuit, the company can present the patent non-infringement opinion as evidence that they have taken reasonable steps to ensure that their product or process does not infringe on any existing patents.
It’s important to note that a patent non-infringement opinion is not a guarantee of protection against patent infringement lawsuits, but it may be used as evidence that the company has taken reasonable steps to ensure non-infringement and can be used in a defense in case of a lawsuit.
Just like with other legal documents, it is important to hire an attorney when working with non-infringement opinions. In addition to providing your business with protection from lawsuits, they will also review your product or service and make sure that it does not infringe on any patents, trademarks, or copyrights owned by another party.
How can I reduce the risk of infringement in my development process?
To reduce the risk of infringement, you should start the clearance analysis for a product well in advance of the product launch, and update it throughout the lifecycle of the product. You should also consider varying your approach to clearances based on the circumstances and value/risk to your business.
In some cases, it may be appropriate to rely on opinions from patent counsel regarding non-infringement before obtaining written opinions from an expert and/or filing provisional patent applications for pending patents that are relevant to your technology. This can help ensure that you are not infringing another party’s patent rights while you continue developing your own technology, especially if there is little time left before launch or if there is concern about whether an unlicensed competitor could gain access to key information about your development activities through a freedom-to-operate search or other means (e.g., reverse engineering).
Is a non-infringement opinion provided in combination with a clearance search?
A clearance search is not a substitute for a non-infringement opinion, and vice versa. A clearance search is focused on helping you determine whether there are any patents that might be relevant to your product development. It does not consider whether those patents have been infringed by another party—that’s what the non-infringement opinion does.
It’s important to understand that a clearance search is not comprehensive or exhaustive in nature; it only covers US patents issued within the last 20 years or so, so if you need assurance that your technology doesn’t infringe any older patents (or very new ones), then you’ll also need an IP attorney who can provide you with this additional protection through his or her own research into prior art involving similar technologies and products.
Start the clearance analysis for a product well in advance of the product launch, and update it throughout the lifecycle of the product
- Start the clearance analysis for a product well in advance of the product launch, and update it throughout the lifecycle of the product.
- Update your clearance analysis as changes are made to your products or packaging. Starting early and maintaining an updated clearance analysis will allow you to identify potential issues before going into production, which will save time and money by reducing required non-infringement opinions.
- Keep your vendors on board with your timeline so they can help you stay on course with deadlines for obtaining patents and IP rights from outside sources.
Consider varying the approach to clearances based on the circumstances and the value/risk to the business
- When deciding whether to order a thorough and documented freedom-to operate analysis, it is important to consider a number of factors such as the product’s importance, its location in the life cycle, and the potential risks for the business. If the product clearance analysis is complicated, outside counsel may be required. However, simpler analyses that deal with less issues may not require it. Although in-house counsel is capable of preparing opinions, it is recommended that a second attorney review the opinion.
- Consider factors like the size of your company, the complexity of your product, and the potential value of your product. It is important to determine how much your business can afford to spend on clearance work because the costs add up quickly. For example, if you don’t need a patent clearance until after you’ve started manufacturing and selling a new product, then you might want to consider waiting until that point before proceeding with clearances. If there are no other options available for protecting yourself from potential infringement suits against competitors—and especially if there is significant risk associated with launching early (that is, without patent protection)—then it may make sense for you to move forward with seeking clearance even though this could be costly in terms of time and money spent on legal fees as well as any additional expenses incurred while developing prototype products.
Pay attention to the timing of the opinion you obtain
Obtaining an opinion on your product’s non-infringement before the launch of your product is a good idea for companies that have a strong understanding of their own patents, are confident in their legal protection and are prepared to defend against patent infringement claims. For most companies, however, it’s too early to obtain a non-infringement opinion until they know their targeted customers’ reactions to their products.
It can make a difference in the effectiveness of an opinion. If the business is close to product launch or anticipating litigation, the opinion should be delivered by outside counsel who has reviewed the relevant patents thoroughly and given an opinion well before the product launches. If the business needs to make a decision, it is crucial that the opinion is communicated to decision-makers so that they have the opportunity to present the analysis to them.
If a written opinion is not possible to provide in a timely fashion, an oral opinion may be provided prior to the product launch. This opinion will then be documented in a written statement after the product launches. It is better to get an opinion on a patent or product as early as possible to increase its effectiveness. This will allow one to use it in any litigation.
If you learn that one of your competitors has filed or threatened to file suit against you over an alleged violation of its patent rights, you may want to seek legal advice immediately. You should also arrange for a prompt review of your product by qualified intellectual property counsel (including reviewing any existing patents) and consider whether other products manufactured by third parties could be subject to possible litigation by this competitor as well.
In addition, if there are any recent changes involving either party’s line(s) of business or technology involved in the dispute (such as new products being developed), then these factors should also be considered before making any determinations regarding availability/advisability.
Make sure the business is trained to communicate with discovery in mind so they don’t inadvertently undermine clearance/opinion efforts
Communication hygiene is crucial. It is important for businesses to be taught that they shouldn’t discuss whether a product infringes or invalidates a patent. If these conversations take place within the company, it is best not to have them in writing. It is better to call in-house counsel if you have a question about a competitor product or patent than to send an email to them.
You need to know who is doing the work and why it is being done. You also need to be clear about what you want them to accomplish and how you want them to accomplish it.
Finally, you need to be able to communicate with discovery in mind. If an inventor or engineer has not been trained on how best to protect his or her IP, he or she may inadvertently undermine a clearance/opinion process by making disclosures that should have been withheld from the public record of a patent application or an issued patent.
Consider splitting up non-infringement and invalidity opinions
While it may seem like a challenge to provide two individual opinions, there are several benefits to this strategy. One of the main benefits is that the patent clearance opinion will provide the necessary information for an invalidity opinion, including which claims are being challenged and what prior art is being cited as relevant.
Splitting non-infringement and invalidity opinions into separate documents/efforts can help maximize your options in litigation. This can allow litigation counsel to rely on one opinion, but not necessarily waive privilege for communications related to the other opinion.
Additionally, issuing two separate opinions helps ensure that you are not paying for unnecessary work due to overlap between your non-infringement and invalidity opinions. For example, if both advisors were asked to determine whether or not a particular claim was anticipated by prior art cited in another part of their respective fields of expertise (e.g., one advisor was asked about anticipation and another about obviousness), then it would be appropriate for them each to only review those documents at issue when forming their respective conclusions. In contrast, if both advisors had reviewed all of these documents before writing their reports—even though they did not have any impact on either report—it would likely result in extraneous work that could have been avoided altogether by splitting up these tasks between multiple legal professionals who specialize in different areas of law.
Consider addressing reasonable alternative claim constructions
You should also consider addressing reasonable alternative claim constructions. It can be helpful to consider alternative claim constructions when deciding which arguments should be included in an opinion. Although counsel’s conclusions do not have to be correct to protect an accused infringer from a finding that they willful infringement has been made, it can be difficult to prove that the opinion is reasonable if it is built on a claim construction that fails in litigation. Although alternative claim constructions can be accepted, it is best to not include unreasonable arguments in an opinion. They could weaken the opinion and undermine the objective assessment of whether the business relying on the opinion.
Carefully consider to whom the opinion should be addressed and how the opinion should be delivered to the business
Always make sure the opinion is addressed to the business. This is crucial because it ensures that you are protected from liability if something were to go wrong with your product after an infringement claim against it.
In-house patent counsel should request an opinion. The opinion should then be delivered to the key decision maker within the business by the in house patent attorney. It is a good idea to record all delivery steps and to get a written record proving that the decision maker read and understood the opinion. This documentation could be used as evidence in any litigation to support the conclusion that the business did in fact not infringe a patent.
Be careful when choosing a delivery method for your non-infringement opinion. Delivery methods can include email, hard copy and electronic delivery (which includes attaching the document to an email).
Make sure the opinion is easy to find and understand by others within your company who may need access and distribution rights.
When developing new products or systems, it’s wise to consult an IP attorney before launching your product
When developing new products or systems, it’s wise to consult an IP attorney before launching your product. It may be necessary to obtain a patent clearance from the USPTO or a non-infringement opinion from an IP attorney prior to launching your product.
You could lose your position in litigation if a paper trail of conversations, assessments, product clearances, landscapes, freedom-to-operate analysis between employees is made. Outsourcing the clearance work to outside counsel can reduce the likelihood that the analysis’s content will be accidentally discovered. Outside counsel can also manage and maintain the analysis.
Whether you’re an inventor, innovator or manager of intellectual property, IP Clearance services can help guide your product development and avoid potential infringement issues. The benefits of seeking these services early in the process are clear: from avoiding costly litigation and reducing the risk of damages to leading to a more profitable product launch. In this article, we’ve provided some tips for how companies can best use patent clearance searches and non-infringement opinions as part of their overall IP strategy—but it doesn’t end there! Contact us today if you’d like assistance with your clearance needs or if you simply want more information about what we do here at PatentPC.