Infringement is the unauthorized use of an invention that is already patented by another inventor by way of selling, manufacturing, offering to sell, importing or using such an invention. The very nature of intellectual property is that multiple persons, who have no connection with each other, can have the same idea regarding a particular invention simultaneously. Hence, it is necessary to protect these inventions as soon as ideas are developed. Patent infringement suits are disadvantageous as they are costly, time consuming and economically inefficient. It is always better to take precautions for avoiding such infringement claims.
The steps to avoid patent infringement claims are as follows:
Maintain up-to-date and regular checks regarding new patents that have been registered in your interest area:
It is important to keep a tab on all registrations that have taken place in the area where infringement is possible by your product, at its concept stage itself; but it is not necessary to know all the patents that are registered in general. Monitoring the market activities is a preliminary step for avoiding infringement of patents. A registration of an invention is considered to be a constructive notice to the rest of India (or world, depending on the type of patent) that an idea or invention belongs to the applicant. It is not possible to claim that there was no knowledge of such an invention post its registration. Hence, potential stake holders must prudently keep an account of new patent registrations and applications. This search could be conducted through the Indian Patent Advanced Search System website.
Freedom to Operate Search:
Freedom to Operate Searches are conducted to identify any obstacles present in utilising any product due to existing protected/protectable patents. This search is carried out in order to support clearance of technologies and processes, assessing of infringement risk, uncovering licensing needs and ascertaining direction for product development. The search is conducted among valid and active patents, published patents pending grant and expired patents (optional).
Understand the inventions identified along with its associated rights:
Each of the inventions identified for possible overlap have to be studied in detail. This includes the process of understanding their functioning. In doing so, the actual idea that is protected can be ascertained. This is a vital step as a newer invention could be maneuvered around the protected aspects of a prior invention in order to avoid infringement claims.
Study the claims/oppositions made to the identified patents:
It is advantageous to refer to the claims made in the opposition to the patent identified, in order to discover possible points for clearance. The arguments, evidences and other documents submitted as opposition and counterclaims are necessary documents to be referred to in order to gain clarity as to what the scope of protection awarded to the patented invention is.
Ascertain the validity of the identified patented invention:
It is necessary to identify if the patent is still valid. Invalidity could be caused due to non-payment of fees, acceptance of opposition by controller, expiration, etc. Hence, if a patent is not valid, there is no infringement possible on that patent. It is possible that the patent search system has not been updated regarding the expiration of certain patents, therefore, all identified active and valid patents must be checked for their expiration.
Seek permission/license from the patent holder to utilise the protected invention:
In situations where the identified patent is valid and non-infringement is not possible, a licensing deal is an apt solution. It is important to seek permission through licensing or through an ordinary contract from the patent holder to make use of the protected invention. The risk of infringement suit outweighs the cost of acquiring a licensing deal.
A preliminary search can be made in order to test the potential risks that are present. These tests can be carried out to ascertain the possible patents that could be infringed along with its validity. A patent attorney can further conduct a thorough search and ascertain the identified patent’s validity. It is vital to work around registered patents in order to uphold the patent enforcement system.
If the invention in question is an improved version of an already existing patent, then a subservient patent could be acquired to avoid any overlapping patent rights. It would, further not be considered as infringement if the patented article is used for purposes of research only. Additionally, a patent attorney or analyst is required if there is a substantial possibility of infringement of a patent.