Freedom to Practice
One of our clients, which was a new startup company, was developing a new product. Although they weren’t aware of any particular patent that might cover the product, they wanted to find out if there were any potential patent infringement risks associated with releasing the product in the United States. Also, although they had no immediate plans to sell the product outside the U.S., they also wanted to get a general sense as to the level of patent-related risk associated with selling the product in Europe, Canada, South Korea, Australia, Japan, and Mexico.
After consulting with our client about their strategic business goals and budget, with costs in mind, we worked with a third party searching company to conduct a freedom to practice search that focused primarily on U.S. and European patents, but that also included international “PCT” patent applications. (This approach can provide a cost-effective way to identify potentially relevant patent documents in a large number of countries without incurring the cost of searching within each individual country.) We asked that the searcher include expired patents and published patent applications in their search, which can be helpful in assessing the scope and validity of any potentially relevant, active patents identified in the search
Upon reviewing the results of our search, we identified three potentially-relevant U.S. patents and one potentially-relevant German Utility Model (a type of inexpensive patent filing that is not substantively examined by the German patent office before being published). After talking more with the client and analyzing the patents in more detail, we determined that the claims of two of the U.S. patents didn’t cover the client’s product. We also determined that all of the claims of the German Utility model were invalid in view of an expired patent that was identified in our search. This left only one potentially-relevant U.S. patent to consider in greater detail.
Although it was arguable whether the claims of the remaining U.S. patent covered our client’s product, out of an abundance of caution, we worked with the client to modify their product so that the product was clearly outside of the patent’s coverage. Because the product was still in the design phase and hadn’t been released to market, the cost associated with making the change wasn’t substantial and actually served to enhance the product’s functionality. The client later successfully launched the product without issue.