Freedom to operate and patentability

Explore basic issues before applying for a patent

coffe cup next to pen and napkin with IDEA written on itIf you’ve developed a new product or process that you plan to use as a basis for a new business, you might be tempted to plunk down a large sum of money right away to have a patent agent or attorney prepare and submit a patent application for you. However, this would be premature. There are at least two questions that you need to answer beforehand. First, you need to determine if you have “freedom to operate” — whether or not you can produce and sell a product or use a process without infringing on the intellectual property rights of others.

At first blush it might seem as though determining freedom to operate simply entails checking to see if there are any patent applications or issued patents with claims that cover your invention. In reality, it requires a little more evaluation. If you find relevant patent applications or issued patents, you could still have freedom to operate based on any number of factors. The patents may not be in force because the patent holder didn’t make the required maintenance payments. The patents may be expired. Claims in the patents might be narrow. The patents themselves might be subject to challenge for any number of reasons. Or the patent applications may have been denied. Even if you find relevant, enforceable patents, you may still be able to obtain freedom to operate by negotiating a license with the patent holders.

The second issue is patentability, which is something entirely different from freedom to operate. Determining patentability means finding out whether or not you can obtain a patent for what you claim to have invented. This is generally what people think of when they talk about patent searches. To obtain a patent in the U.S., an invention must be novel, non-obvious and useful. Usefulness is often in the eye of the beholder; therefore, most inventions will easily meet this test. But the U.S. Patent and Trademark Office will thoroughly scrutinize your invention to make a determination regarding the other two requirements, and so should you.

Determining the patentability of your invention goes beyond just searching issued patents. A patent application can be denied based on prior art, which can be embodied in more than just previously issued patents. You should also review in-process and previously denied patent applications to determine if someone else has applied for a patent for something that is close to your invention. Prior art may also be found in relevant papers published in professional and industry publications. To ensure a thorough search, scan the marketplace to see if anything like your invention is being sold. It’s important to note that for the U.S., prior art in patents and publications can be from anywhere in the world, whereas “for sale and use,” prior art must be in the U.S.

To some people, freedom to operate and patentability might appear to be essentially the same thing. However, the two are very different. Patentability does not necessarily imply freedom to operate, and freedom to operate does not necessarily imply patentability. If you do have freedom to operate you might be barred from obtaining a patent for any number of reasons. If you are able to obtain a patent you might not be able to practice your invention because doing so might infringe on someone else’s intellectual property, which can be the case if your invention is an improvement to some other existing invention.

With a little patience and some concerted effort, you can get a pretty good feel for patentability and freedom to operate yourself before spending a lot of money. However, patentability and freedom to operate evaluations are probably best left to the professionals. Don’t be tempted by the late night television advertisements or Web sites offering such services for a few hundred dollars. A good patentability or freedom to operate evaluation with an opinion will probably cost somewhere around $2,000 if performed by a credible and qualified patent agent or attorney. However, given the costs associated with prosecuting a patent and the potential liabilities associated with patent infringement, it will be money well spent.

Learn more about technology development and commercialization. If you have questions about product development or patents, contact your local Missouri Small Business & Technology Development Center.


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