A patent is a legal document which gives the owner a monopoly on the products or methods defined therein for a defined period of time.

A patent owner has the legal right to prevent others from carrying out acts which would infringe upon the patent protection, i.e. others cannot commercially make, use, distribute, import or sell the patented invention in any territory the patent is in force in, subject to certain exceptions, without the consent of the patent owner. If a business or individual is found to have committed patent infringement, an injunction can be taken out against them, the infringing goods may need to be confiscated or destroyed and they can be liable for damages and the patent owner’s legal costs. This can be very damaging both reputationally and financially.

The protection given by a patent is defined by its claims, the wording of which constitutes a legal statement outlining exactly what is to be protected by the patent.

Whether or not your business has its own patents, you need to be aware of whether your competitors have any patent protection which may impact upon what you are legally allowed to do – also known as your ‘freedom to operate’. This guide will outline the steps a business can take to ensure their freedom to operate in their business area. If you are considering developing an important product for your firm, this search is an important initial step to inform you what you may or may not do going forward in view of the existing rights.

While ‘freedom to operate’ searches for relevant patent rights in your technical field can be quite expensive, they are vital in helping to avoid the large potential costs of patent litigation and infringement proceedings before the courts. However, if finance is an issue, there are also ways that a firm can mitigate and minimise any potential infringement risk without incurring significant costs.

1. Understand what is meant by ‘patent infringement’

When assessing whether a company may potentially infringe a patent’s rights, it would first of all be necessary to understand what infringement actually means.

There is more than one way in which a patent can be infringed. In the UK, the law says that, without the consent of the patent owner:

• The invention is a product: infringement occurs if a person/entity (other than the patent owner or a licensee) makes, disposes of (i.e. sells), offers to dispose of, uses or imports the product or keeps the product;
• The invention is a process: infringement occurs if a person/entity (other than the patent owner or a licensee) uses the process or offers it for use in the UK when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent; and
• The invention is a process: infringement occurs if a person/entity (other than the patent owner or a licensee) disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product.

This is called direct infringement. For a patent claim to be infringed, all of the features defined in the claim must also be present in the potentially infringing product or process.

There is also indirect infringement, which occurs where a person/entity (other than the patent owner or a licensee) supplies or offers to supply in the UK to a person not entitled to work the invention with means relating to an essential element of the invention for putting the invention into effect when they know, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the UK.

There are however some defences to these infringements, which include, for examples, private or experimental use, or if the supposed infringement of the patent had already been carried out in good faith by the alleged infringer before the priority date of the patent.

2. Identify your main competitors

First of all, you should identify all of the companies with whom you are most directly in competition with, as well as any companies who make similar products to you or parts for your products – including your own suppliers. These are the ones most likely to own any patent rights which might impact on your freedom to operate.

3. Check what existing and potential patent protection they have

You should then see what IP protection your competitors and suppliers have.

You can search for details of their patent filings online, using tools such as the European Patent Office’s Espacenet and Google Patents. Alternatively, you can contact a patent attorney for advice on how to conduct a more thorough search.

You can carry out searches using the names of the competitors and suppliers you have identified, and/or some key words that best describe your technology. This will bring up a list of results. From these results, you can determine which patents are most relevant to your products or methods, and whether or not they are covered by the scope of the claims of the patents or patent applications.

You should also note any pending patent applications that your competitors or suppliers may have. While patent applications themselves cannot be infringed, they may become granted patents, which can be infringed. However, you should also be mindful that the wording of the claims, and thus the scope of protection of any such granted patent, may (or may not) be different from that in the pending applications.

Resource: Watch our patent searching webinar to learn how to use Espacenet and Google Patents

4. What should you do if there is a patent that appears to cover your product or process?

If you find one or more patents or pending patent applications which you think may cover your product or process, there are some things that you should check or consider before simply giving up on your own product or process.

i) Is the patent still in force?

A patent which is no longer in force cannot be infringed. Sometimes, you will find that the patent which appears to be a problem was successfully invalidated after grant, or it has lapsed due to non-payment of fees, or has simply expired if it is over 20 years since the patent was filed. In such cases, there are no rights left in the patent which can be infringed. Therefore, check if the patent is still in force in the country or countries relevant to your business.

ii) Is it possible to modify your product/process to get around the patent?

If your product or process is flexible, they could be modified to exclude a product feature or process step which is defined in the claim as being essential for the patented invention, or by changing a component for another, to reduce the risk of infringement.

iii) Could it be possible to license the patent?

If the patent owner is not one of your more direct competitors, it may be possible to negotiate and obtain a license from them to use the patented invention.

iiii) Could the validity of the patent be challenged?

Not all granted patents are strong patents. When a patent is granted, it is done so on the basis of its patentability relative to the documents a patent office has found to be relevant. However, a patent office does not always find all of the relevant documents. Sometimes, important ones are missed, which can mean that if challenged on the basis of any new important documents, the validity of the patent might be questionable. Essentially, if it can be proven that the same invention as, or one very similar to, the patented invention, existed before the priority date of the patent, the patent can be revoked. A revoked patent cannot be infringed.

You can search for any such documents, again using Espacenet and Google Patents. Also, any products which had been in the public domain before the priority date can be used as evidence, if it can be proven exactly what was in the public domain and when.

In such cases, approaching the patent owner with this information may enable you to obtain a license of very reasonable terms, in return for not challenging the patent. Alternatively, if such discussions were not fruitful, invalidity proceedings can be brought against the patent to try and remove it as an obstacle to your freedom to operate.

v) Get patent indemnity insurance

It is possible to buy patent indemnity insurance. Infringement lawsuits are extremely expensive, and the costs involved can put companies out of business, especially if a lawsuit is lost. Patent indemnity insurance protects the business, as it usually covers the fees for any professional advisers involved in defending against the claims of patent infringement, as well as covering the costs of any settlement or damages if the lawsuit were to be lost.

However, in relation to any of these points, we would also strongly recommend contacting a patent attorney for legal guidance.

5. Continue to monitor your competitors’ patent rights

Once you have completed the initial patent search, you can set up a patent watch so that you can check for any new developments every so often (3-6 months is usual) using the same search parameters. That way you keep up to date with any new developments in your competitors’ patent rights, such as any new patent publications, or granted patents, which allows you to always have the best idea of your legal position.

At Wilson Gunn, we help businesses to protect their valuable intellectual property. For further information about managing your intellectual property, please visit the Resources section of our website or get in touch to speak to one of our attorneys.