Difference Between Patentability Search Opinion and a Non-Infringement Opinion

I.  What Is The Difference Between Patentability Search, Opinion, And A Non-Infringement Opinion?

In a Patentability Opinion, a patent attorney provides his professional opinion as to whether your invention is Patentable. He will commission a search of patents and publications disclosed throughout the world and determine whether, in view of the existing public disclosures, your invention is patentable.

In a Non-Infringement Opinion, your patent attorney will provide his professional opinion as to whether your invention (even if patentable) may infringe on the patent rights of others. It is important to understand that these are too different assessments.  Here is why.

Even if your idea is patentable, you may still be prohibited from making/using/selling your patented invention!  How is this possible?  This can be understood with the following example:

  1. Inventor 1 invents and patents a chair. For the sake of this example, let’s assume the patent is valid and has not expired.

Later on, Inventor 2 invents an armrest for the chair.  Inventor would like to know if his armrest is patentable, so he commissions a patent search.  The patent search did not reveal any chairs with an armrest, so Inventor 2 properly concluded that his idea is patentable.  Inventor 2 files a patent application and the United States Patent and Trademark Offices grants him a patent!

Now, let’s update the facts in our example:

  1. Inventor 1 invents and patents a chair.
  2. Inventor 2 invents and patents a chair with an armrest.

Having a patent, Inventor 2 is finally ready to bring his invention to market! In the process of manufacturing the chairs with an armrest, Inventor 2 gets a Cease and Desist letter from Inventor 1, stating that, stating that Inventor 2’s chair with an armrest infringes on Inventor 1’s patent!  How is this possible?  After all… inventor 2 received a patent for his chair with an armrest!

To answer this question, it is important to understand that a patent right is only a right to exclude others from making/using/selling your patented invention. It is not an affirmative right to engage in the making/using/selling of your patented invention.  Why?  Well, going back to our example, in order for Inventor 2 to make his chair with an armrest, he must inherently first make a chair.. and the chair is patented by Inventor 1!

To resolve this issue, Inventor 1 and 2 may engage in a licensing deal wherein Inventor 1 licenses, for a fee, the rights for Inventor 2 to make a chair.  However, the licensing deal is completely voluntary, and Inventor 1 can simply refuse to allow inventor 2 to make a chair, thereby preventing inventor 2 from making a chair with an arm-rest!  Inventor 2 would then be forced to design a chair that does not infringe Inventor 1’s patent… which may be very difficult!

II.  Making Sure Your Invention Is Both Patentable And Does Not Infringe Any Third Party Patent Rights

STEP 1: THE PATENTABILITY OPINION

  1. First, conduct a patent search to see if your invention is patentable,
  2. You patent attorney will review the search results to determine if your invention is different from other patented inventions, and
  3. Based on the results, your patent attorney will determine if your invention is patentable.

STEP 2: PRELIMINARY NON-INFRINGEMENT ASSESSMENT

  1. The Patent Search will reveal prior patents that are similar to your invention.
  2. These prior patents may not disclose your invention completely, but contain portions of your invention.
  3. During your patent attorney’s review of the search results, he will ‘flag’ such patents.
  4. Upon your request, the patent attorney may then assess whether the portions of your invention that are covered in the patent present a potential infringement issue.
  5. If a potential infringement is detected, the patent attorney must then engage in an in-depth review.

STEP 3: IN-DEPTH NON-INFRINGEMENT OPINION

  1. The patent attorney will order the full-file history of the patent at issue.
  2. The patent attorney will spend time to review the full-file history, to see what representation and characterizations were made by the inventor during the examination process.
  3. The patent attorney will assess case-law to determine how these representations and characterizations may be interpreted by the Federal Courts in charge of determining patent infringement.
  4. The patent attorney will then apply the interpretation in assessing the scope of patent protection that may be available for the patent at issue.
  5. The patent attorney will then compare the scope of the patent protection with your invention and provide a non-infringement opinion.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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