As a patent attorney, I am frequently asked, “Can I copy my competitor’s patented product?” The short answer is . . . wait for it, wait for it . . . it depends. This question typically comes up when a business owner wants to commercialize a product or perform a process (referred to collectively in this article as “good” or “goods”), discovers a patent related to the good, but is not sure what the patent covers. As a registered patent attorney, I evaluate patents and patent applications to determine the risk of developing competing goods. Below are three important questions that must be answered by a registered patent attorney to evaluate the risk of competing against a patented good.
Typically, a registered patent attorney will conduct a “freedom to operate” opinion to determine if a business owner can commercialize a particular good without infringing on another’s patent. First, a patent attorney will determine if the patent is enforceable. Next, a patent attorney will perform an infringement analysis to determine if a particular good infringes on any of a patent’s claims.
To perform an infringement analysis of a patent and a possibly infringing product, first, the patent’s scope must be analyzed. Second, the patent’s claim terms must be interrupted using the specification, prosecution history and extrinsic evidence to understand and construe the meaning of the claim terms. After the claim terms have been construed, then the elements of a particular good must be analyzed to determine if the particular good practices each and every claim element taught by a patent’s claim. If a good practices each and every claim element, or one of its equivalents, taught by a patent’s claim, then infringement exists. If the good does not practice at least one claim term, then no infringement exists. Additionally, a patent attorney may also conduct an analysis to determine if the patent is valid or if there is a possibility the patent can be invalided.
Patent validity opinions are a patent attorney’s opinion as to the probability that a patent’s or patent publication’s claims are valid and enforceable. A patent attorney analyzes the prior art, or any evidence related to an invention known before the filing date of a patent, and the circumstances surrounding the prosecution of the patent to render a patent validity opinion. Typically, a search is also performed to find relevant prior art that was publicly known before the filing date of the patent that may not have been considered in the prosecution of a patent at the United States Patent and Trademark Office (the “USPTO”). A patent attorney will analyze the patent and the prior art to determine the probability that a patent or patent claim will be invalidated because in light of the prior art the claims of the patent are not obvious or not novel.
Depending on the answers to the questions above, a business may decide to challenge a patent or patent application. Several options exist for a business to challenge a patent application. These options include pre-issuance submissions filed with the USPTO, post grant reviews filed with the Patent Trial and Appeal Board (the “PTAB”), inter partes reviews filed with the PTAB, ex-parte reexamination filed with the USPTO, covered business method patent reviews filed with the PTAB, and filing legal action seeking a declaration of non-infringement in a United States District Court. My next post will more fully explain the options for challenging a patent.
The patent attorneys at The Plus IP Firm help businesses and inventors protect their ideas, concepts and creations with patents, trademarks and copyrights. The patent attorneys at The Plus IP Firm have helped numerous clients determine the risk of developing products that compete against patented products. To schedule a free consultation, click HERE. For more information about Derek Fahey, this article’s author, click HERE.
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