I help many clients who received cease and desist letters stating their products infringe some patent rights. By the time they come to me, it’s about ruling out frivolous claims, mitigating damages if not frivolous, and reducing costs related to settlement and litigation.
What if you can avoid all those by doing these simple things before launching your product?
Nothing is entirely new, so ask yourself what has inspired you.
Virtually, there is no product that comes out of nowhere. Was iPhone entirely new? No, it was based on preexisting cell phone and tablet computer technology.
Hence, regardless of whether you took someone’s idea and made improvement upon or you invented something totally new, there is going to be underlying technology that you took from someone else.
So, the question you should ask yourself is what inspired you. If you are launching iPhone, you will take a look at patents owned by cell phone and tablet computer makers. Yes, there will be so many of them.
However, if you are launching a new type of hair brush, you only need to look at the handful of patents owned by companies who make that particular type of hair brush. Oftentimes, you know who’s leading the pack, and that’s where you should start your search.
Check the product label first.
Patent owners (even those who only “applied” for patents) frequently mark their products with “Patent Pending” or “Patent No.”. It’s not only a marketing hack but helps patent infringement claim in courts, so it is highly likely there will be a marking if there is a patent. Therefore, you shouldn’t overlook checking products’ labels.
Literally, Google offers patent search service called Google Patents. Use advanced search fields if you may, but simply typing some keywords in the search box may do the job.
What is the product called? The names of essential parts? What are the features? When you locate one, also check other patents cited and linked at the bottom. Your search should toward finding things more similar to your product. When you feel you’re not getting closer to your goal after search after search, you should stop at some point.
If you found a patent that is very close to what your product does or looks like, you have located a “blocking” patent that could give rise to a patent dispute. However, even if there is a patent (or pending application) that looks just like your product, don’t be discouraged. A patent is not a blank check.
Determine the scope of patent protection.
If you read the issued patent carefully enough, you can discover that the patent describe the invention fairly exhaustively and then “claim” a certain aspect of what is described.
Please refer to Patent Infringement: Clearance Search Explained – IPfever for a break-down of a patent document.
Claims should be construed with an understanding of dependency. If a claim refers to another claim, that claim is considered dependent. Independent claims are limited only by all the things recited within the claims whereas dependent claims are limited by all the things recited plus those recited by reference.
Why limited? To infringe a patent, your single product must include all the things recited. If a patent claim recites only two things: “a sharp edged steel” and “a handle attached to it”, basically all knives would infringe the patent.
However, modern patents tend to have many things recited, which are called limitations, within their even the most independent (hence broadest) claims, so unless your single product has all the limitations, you will be okay.
Because of the aforementioned technicality of patent protection, it is quite feasible that you can simply avoid infringing patent by modifying a minor aspect of the product. For example, if a patent is about a new and improved golf grip, you can probably modify the internal structure of the grip. Just avoid having all the limitations in a product; just missing one limitation is an enough design-around.
When to seek help
If you feel determining patent scope and designing around a bit overwhelming because of lack of experience, that’s totally okay. You already saved tons of legal fees by simply locating blocking patents.
An expert legal opinion clearing your product from a single identified patent may cost you only a few hundred dollars.