When encountering a patent owned by another party, it can be difficult to understand the impact of that patent on your business. To make sense of the total impact of another party’s patent, it is critical to understand the two-sided nature of a patent. This alert breaks down some of the intricacies of patents and addresses some frequently asked questions that arise when you or your patent attorney discovers a patent that is relevant to your business.
Much of this confusion arises from the fact that patents act as both a type of property and as prior art to later patent applications.
Patents as Property
A patent is a legal right to prevent another party from making, using, performing, selling, offering to sell, or importing a device, method, article of manufacture, or composition of matter (i.e., an invention) in a specific jurisdiction. The invention is defined by the claims—only what is recited by the claims is protected.
Note that this is a “negative right”, meaning it allows you to stop somebody else from doing something, but does not necessarily give you the right to make use of your own invention. Also note that your patent does not necessarily give you the right to prevent somebody else from patenting a similar invention or an improvement to your invention. These caveats mean that it is possible for two parties to have overlapping patents.
To use a simplified example, imagine that Party A has a patent that claims “a boat”. Party B then obtains a patent claiming “a pontoon boat”. Party B can prevent Party A from selling pontoon boats, and Party A can prevent Party B from selling any boat, including pontoon boats. In this situation, Party B does not have the right to practice its own invention, even though it has a patent for it. This example illustrates the crucial point that obtaining a patent has no impact on whether your business has “freedom to operate” (or “FTO”). Your patent attorney can analyze the claims of another party’s patent and help you determine whether the patent poses a risk to your business.
To minimize the risk of receiving a surprise patent infringement lawsuit, a patent professional can perform a freedom-to-operate search, which includes searching for active patents and patent applications in jurisdictions of interest and analyzing the claims of those patents and applications in view of the product or service your business intends to sell.
Patents as Prior Art
“Prior art” simply means any evidence that an idea existed before the filing date of a patent application. This can include documents, images, videos, physical objects, etc. The most commonly cited prior art references are patents and published patent applications, primarily because their public nature, standardized formats, robust drafting, and reliably recorded dates make them easy subjects for searching.
Notably, when a patent or published patent application is used as a prior art reference, it does not matter what is claimed in that patent/application, which country it was filed in, who filed it, or whether it is active, pending, abandoned, or expired. In short, a patent or application’s legal status has no effect on whether it can be used as prior art.
The only thing that matters is the information it contains. If you are considering filing a patent application, it can be a good idea to have a patent professional perform a prior art search, which includes searching for any patents or published applications in all jurisdictions and analyzing the content of those documents in view of your proposed invention. The results of a prior art search can better inform you of your chances of obtaining a patent and the breadth of the claims you may be able to get and allows your patent practitioner to draft claims that avoid the known prior art, which can save significant time and money during prosecution.
Frequently Asked Questions
- Can the owner of this patent sue me for selling my product/service? Possibly. If the patent is active in a country where your business operates and your product/service matches at least one of the claims of the patent, you might be at risk of a patent infringement lawsuit. You should meet with your patent attorney to discuss this risk and decide how you want to proceed.
- Can the owner of this patent stop me from getting my own patent? The owner of the patent has limited options to prevent you from obtaining a patent. The patent itself may act as prior art, however, which could be used as a basis for rejecting your patent application and could prevent you from obtaining a patent or require you to change the scope of your claims.
- Do I need to change the claims of my pending application in view of this patent? Possibly. If your invention, as defined by the current claims in your application, would not be novel or would be an obvious combination of multiple references in view of this patent, then you may have to change your claims. You should review and discuss this patent and your claims with your patent practitioner.
- Does this mean that my existing patent is invalid? Possibly. If this patent pre-dates your own patent, and the information described in this patent makes it so that none of the claims in your patent are novel and non-obvious, then your patent may be invalid. You should meet with your patent attorney to discuss options.
- Do I need to tell the USPTO about this patent?
- If this patent is relevant to the claims of your pending application and is not cumulative over other information known to the patent examiner, then you must present it to the USPTO via an Information Disclosure Statement (IDS).
- If your patent is already issued before you became aware of this patent, then you are not required to tell the USPTO. However, this patent can still pose an invalidation risk during a litigation or other proceeding.
- Can the owner of this patent sue me for filing a patent application? No. Filing a patent application is never a source of liability for patent infringement. Their patent does not give them the right to stop you from obtaining your own patent. However, many patentees monitor published patent applications for hints of infringing products.
- This patent is expired. Does that mean I can get a patent on this idea? No. Even expired patents act as prior art. Claims directed to an idea described in this patent would not be considered novel.
- The claims of this patent don’t match my invention. Does that mean I can still get a patent? Not necessarily. The claims of a patent or published application do not determine whether you can get a patent. What matters is whether the information described in the patent/application render your claims not-novel or obvious.
- The invention described in this patent would infringe my own earlier patent. Can I sue the owner of this patent? Not necessarily. You cannot sue them for having filed and obtained this patent. You may be able to sue them if they are selling a product or service that infringes one of your claims.
