There has been some discussion on patents before here on EB – how you need to have not just an idea, but also proof-of-concept, a physical prototype, and manufacturing process in mind to apply for a patent. How sometimes you need to have a patent to start your company, and sometimes they are worthless to you, and sometimes they are just a roadblock in your way.
But sometimes it’s not the patents on YOUR idea that you are worried about. What happens if you have a brilliant, light-bulb-flash idea, and somebody ELSE seems to have patented it?
What can you do? That’s the situation I’ve been in this week. I’ve been poring over a ridiculous number of patents (okay, maybe not ridiculous, but 32 – that’s enough to make my brain hurt) to see if what I want to do is going to infringe anybody else’s patent. Here’s some of the things that you can check. Disclaimer is that I am not a lawyer, and this is just my best understanding. If I mess up any point, feel free to speak up in the comments!
1) Is it out of date?
Patents only last for 20 years, so the patent from 1977 that does exactly what you want is no longer valid (in most cases, I’m sure there are exceptions). So go right ahead! And also, take your ego a peg down because somebody in 1977 already had your idea…
2) Is it abandoned?
Google Patent search (which is awesome, and light years ahead of trying to use the USPTO offical search) often turns up patent APPLICATIONS. You can check and see if that patent actually issused, is still in process, or has been abandoned here:
5) Have the fees been kept up with?
If the owner of the patent has not kept up the paperwork, the patent may not be current, in which case you are again free to proceed.
3) Is in invalid?
There are many, many reasons a patent may be invalid. If it did not cite all relevant prior art, if there is not sufficient documentation that the inventor actually invented it (sign your lab notebooks, people!), if it overlaps another patent and somebody at the USPTO messed up in letting it through, if the claims are too broad, etc. It’s hard for me to tell this, but a trained eye would be able to make a judgement.
4) Do you infringe ALL the elements of the claim?
The key point to know about patents, is that the only part that really matters in the end is the claims. The background and description have their purposes, and apply towards full disclosure, reduction to practice, and prior art, but legally the binding part is the claims. Usually Claim 1 is the most general, and then the following claims are more specific (and will still stand even if Claim 1 is struck down as too broad). In order to be infringing a claim, you must be infringing ALL elements of the claim. So in simplistic terms, let’s pretend the patent for a chair says, “A system comprising a) a physical item b) for sitting on c) with a back.” You are still free to make a stool, because it would be a) a physical item, b) for sitting on, but NO BACK. So read carefully through the claims of the patents that worry you, and check if there is an element of each claim that you can get out of.
Wording is critically important. For instance, “comprising” means that the system includes all the stated elements and possibly more, so if your system has all the elements and more, you are still infringing even if you added something new. “Consisting of” means that the system has only the stated elements, and you are in the clear if you added something new. (I’m not a lawyer, this is just how it’s been explained to me!)
And what do you do if you look at all of these things, and it still seems like there is a patent completely blocking your way?
1) License it
There is a reason people patent things – it is because the thing is (supposed to be) useful. The owner may be interested in licensing it to you – and hey, if it’s really that valuable, it may be worth the money.
2) Get a Freedom-to-Operate opinion
A good lawyer will look at the whole patent landscape around what you want to do, and will write you an official opinion (which, of course, is not a guarantee, but as close to one as you can finagle out of lawyers) telling you if you are “free to operate.” Basically, in a professional capacity, this is advice on whether you will be infringing any other patents. Often subtle variations in wording or design can be the difference, which we humble engineers may be unable to tease apart.
3) Get an Invalidity Opinion
There are many, many reasons that patents can be overturned. I have no idea how to tell, I have no training. But if you THINK there is a chance that a patent may be invalid, the lawyers will look at it in detail and make a pronouncement. Very similar to the Freedom-to-Operate opinion, and just as expensive…
4) Do Something Different
Options 1-3 all cost lots of money ($20k is ballpark for an official Opinion), and maybe for a corporation they are worth it. But for little ‘ol me, I would rather just find something different to do. We are creative, intelligent designers! If you know exactly what somebody else has patented, surely you can take that knowledge, and explore other technical ideas in the same space. In the end, engineers have ideas all the time, so grab a beer with some friends, brainstorm, and come up with new directions. Your new idea may be even better than the first one!
Have you ever dealt with an infringing patent, or found that your brilliant idea was already taken?