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Jun 17, 2020 8:25:22 AM

Developing a New Product? Don’t Skip the Patent Clearance Search

by Matthew R. Osenga

There’s nothing worse than spending a great deal of time and money to develop a new product only to have the product later be accused of infringing someone else’s patent or other intellectual property rights.

Due diligence can avoid expensive delays

When a company or inventor seeks to develop a new product, they should try to determine what competitive products are available. Ideally, they are aware of what their competitors are doing. This could include steps such as reviewing trade journals or attending trade shows or monitoring the competition in other ways.

Before undertaking significant investment in filing a patent application or in bringing the product to market, it may be prudent to perform a patent clearance search, sometimes called a “freedom to operate” search. Otherwise, it may be that you receive a cease and desist letter or are sued for infringement after these investments have already been made and you could be on the hook for infringement damages and/or be prevented from using your invention. At the very least, you may have to defend an expensive patent infringement lawsuit.

Why seek legal advice in the early stage of product development?

A patent attorney can assist you by having a search performed for a third party’s patents that may pose a risk of infringement for your product or invention. If there are patents that are close or that may pose a problem, the attorney can work with you to design around the patent or you may abandon the idea and try something else before making significant investment. This is why it is important to obtain legal guidance at an early stage of development, before it’s too late to redesign the product.

A clearance search is typically conducted by a patent search firm under a patent attorney’s supervision. Depending on the stage of product development, the search can be performed on the broad concept of the product or if the product has been finalized or nearly so, on the specific product design. If the search is performed at an early stage, it may assist with determining how to stay clear of opposing patents during the product design. If the search is performed when the product is nearing completion, you can have increased confidence if the results come back clear. If the development of a particular product is very important to the company, it may be desirable to perform an initial search during the early stage of development and then update it when the product is finalized for market.

Responding to Accusations of Infringement

What should you do if you have received a letter from a third party that threatens you with a patent infringement suit or asks you to license a patent? Again, the advice of a patent attorney is invaluable here. Simply ignoring the letter could potentially lead to your having to pay triple damages to the patentee in an infringement suit and being faced with an injunction. The patent attorney can help you to decide an appropriate response and potentially give you a non-infringement opinion or an opinion that the patent is invalid. Perhaps there are good arguments that your product does not actually infringe the patent or perhaps prior art or other arguments can be found that show that the patent is invalid. The opinion could be used as a defense to a charge of willful infringement that may require a payment of triple damages.

Another option when accused of infringement could include negotiating a license or joint development agreement with the other party. Or perhaps the product could be redesigned in a way that would not be infringing and could even provide a patentable product for your company.

Performing a bit of due diligence and spending a bit of time and money performing some background research can be invaluable before undertaking the marketing of a product or filing a patent application. Spending some money now, could save you from a big lawsuit or failure to obtain good patent protection, or any patent at all, later.

Although the cost of protecting the invention may seem high, it usually pales in comparison to the cost of an infringement suit or the initial investment in getting a new product or service to market.

For help with your patent or intellectual property needs, please contact Matt Osenga.


This blog is made available by Goodman Allen Donnelly for general information, and does not constitute legal advice. By reading this blog, you understand that there is no attorney-client relationship between you and the firm. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney in your state.

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