By Matt Benavides ‑ October 28, 2019
Mark Twain said it well over a century ago, long before telephones and televisions reached household ubiquity: “There is no such thing as a new idea. It is impossible. We simply take a lot of old ideas and put them into a sort of mental kaleidoscope. We give them a turn, and they make new and curious combinations.”
Since then, of course, humankind has dreamed up (and patented or trademarked) innumerable new ideas. In turn, it’s become harder than ever to devise an idea someone else hasn’t already thought of and executed. Consequently, whether it’s pharmaceuticals, computer software, or telecommunications technology, or something else entirely, if you’re in the business of invention, chances are you’re at risk of being sued for patent infringement.
When it comes to protecting yourself from a patent infringement suit, conducting a freedom to operate (FTO) search should be a critical part of any product development, the implementation of different manufacturing processes, and product launches. It’s important to note, however, that an FTO is just a single step. The knowledge yielded by a comprehensive, jurisdiction-specific FTO search can affect how you proceed moving forward. Based on your FTO search results, additional searches might be required, or you may decide not to pursue a product at all. Ultimately, taking the knowledge yielded by an FTO search and expanding on it is critical to avoid becoming the target of litigation. Here are four ways you can do exactly that.
1. Assess for invalidity. Having a patent isn’t a guarantee, neither for yourself, nor your competitors. Once your FTO search unearths a problematic patent from a competitor, you need to assess the strength and validity of that patent. If you launched your product today, what is the likelihood of that patent being asserted against you? Is that competitor’s patent strong enough to carry weight in litigation? An invalidity search is a critical next step in determining whether a patent poses a legitimate threat to your activities in that technological space.
2. Continuous monitoring. Just because your initial FTO search didn’t turn up a problematic patent on that particular day, that doesn’t mean a patent might not emerge later. After all, once someone files for a patent, there’s generally an 18-month window before an application (and its contents) is published. Therefore, protecting yourself from potential litigation in the future requires ongoing, continuous monitoring with a focus on freedom to operate.
3. Patent landscape. It may sound cliché, but clichés often happen to be true: Knowledge is power. The better more you know about the atmosphere in which you’re inventing and releasing products, the better protected you’ll be. We’ve established that FTO searches are critical to avoiding litigation. Still, the scope of FTO searches tends to focus on specific features, instead of the technology space as a whole—the pendulum, hands, alarm, or gears in clock, for instance, rather than clocks in general. A patent landscape search can help determine freedom to operate from a higher level, which may help you navigate through a technological area by identifying protective whitespace. It’s not only about who might be developing certain unique features, but which inventions are incorporating them in a way that could present a viable infringement claim against you?
4. Educate your team. Of course, all this information and all this searching is for naught if you don’t use it to empower your research and development team to mitigate infringement risks. It’s critical that you share the outcomes and findings of your searches with the appropriate team members. By providing your engineers and product teams with visibility into the competitive intelligence generated by your ongoing search efforts. With these efforts you can dramatically lower your risk and avoid defensive litigation.
It’s important to remember that all of these search techniques and types are only individual elements of a greater, comprehensive strategy. What matters most is that the searches you conduct are thorough, leaving no stone unturned, and that you make the most of the knowledge you gain.