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Strategies for Avoiding Patent Infringement

Fri Nov 25th, 2022 by  Patents

Patent infringement litigation can be costly. While the precise costs vary according to the value of the patent involved, legal fees in excess of $1 million are not uncommon in patent litigation, with total costs often climbing to several million dollars. Those fees and damages can easily put startups and other early-stage companies out of business. It is therefore essential for such companies to build a patent infringement avoidance strategy into their larger business and intellectual property strategies. After all, the best way to manage costly patent litigation is not to infringe on another company’s patent in the first place. Avoiding patent infringement often is easier said than done, but an Alabama patent litigation attorney can help you develop a plan that works for you. 

Obtain Legal Counsel at the Outset 

Companies that invest heavily in R&D should obtain intellectual property counsel early, ideally from the moment of corporate formation, but at least before launching any products. Intellectual property law is filled with risks and pitfalls for the unwary. For example, inexperienced companies may lose patent rights in their inventions before they even file patent applications because they are unaware of the on-sale and public use bars. Corporate officers may also inadvertently commit acts of patent infringement early in the lifecycle of their companies, which can cause serious issues down the road. Obtaining legal counsel as early as possible can help prevent costly missteps like these. 

Start With a Patent Search 

If you plan to file patent applications for your products, your first step should be to enlist an Alabama patent litigation attorney to conduct a patent search for you. Generally, a patent search is what it sounds like — i.e., a search of existing patents and patent applications in the field of the invention for which patent protection is sought. A patent search can reveal the existence of prior art that could impact your ability to obtain a patent. It can also reveal the absence of prior art in a particular technology, which can open up previously unknown opportunities. At the very least, a patent search can help you determine the contours of your patent strategy and decide whether to invest in patent prosecution. 

Evaluate Your Freedom to Operate 

Freedom to operate opinions are also very effective tools for avoiding patent infringement. Patent rights are negative rights; they allow their holders to exclude others from the inventions claimed in them, but they do not necessarily give holders the right to make, use, or sell the invention. To illustrate, assume that you have obtained a patent on a new TV display technology and you begin selling your new display by removing the displays of existing TVs and replacing them with your own. That action could expose you to patent infringement lawsuits, as numerous third parties hold patents on other elements of the TVs you are using. A freedom to operate analysis can help you avoid a similar scenario by revealing the existence of “problem patents” that present a high litigation risk and limit your ability to make, use, or sell your products. If your attorney finds such patents in a freedom to operate analysis, he or she will offer advice on how to handle the infringement risk they pose, as explained below.  

Evaluate the Litigation Risk of Problem Patents

The existence of problem patents does not necessarily mean that you will be sued for patent infringement if you launch a product. To be enforceable against infringers, a patent must be valid, which means that it complies with the requirements of patentability. These are: 

  • Subject matter: Patentable subject matter is broad but excludes laws of nature, natural phenomena, and abstract ideas
  • Novelty: Patentable inventions must be novel — i.e., different from all other inventions that came before them
  • Non-obvious: Patentable inventions must be more than obvious improvement over existing inventions
  • Written description: An application for a patent must be drafted with such specificity as to enable one skilled in the art to recreate it without undue experimentation

If your attorney identifies problem patents, he or she may also issue a validity opinion, in which he or she analyzes the patents to determine the likelihood that they will be found valid if they are enforced against your products. And even if the problem patents are likely to be found valid, that does not mean that your products infringe on them. Your attorney may also issue a non-infringement opinion wherein he or she compares your products to the claims of the patents to determine their similarity. The more similarity there is between the two, the higher the infringement risk. 

License or “Design Around” High-Risk Patents 

When your attorney discovers valid patents that pose a high infringement risk, there are several ways to mitigate that risk. One of the most effective is simply to license the patent at issue. A patent license gives a person who is not the owner of a patent the right to make, use, and sell the invention described in the patent in exchange for a fee. Patent licensing fees may cut into your profits, but they are still more cost-effective than defending yourself against patent infringement allegations. Another popular strategy to mitigate infringement risk is to “design around” high-risk patents. A product that has been designed around a high-risk patent is one that has been intentionally designed or modified to avoid infringing a specific element of the patent. It often requires an extensive study of the patent at issue and close coordination between legal counsel and R&D departments to omit potentially infringing product features. The resulting product may not be as commercially successful as planned, but, again, a design-around likely will be more cost-effective than patent litigation. 

Craft a Patent Infringement Avoidance Strategy With Help From an Alabama Patent Litigation Attorney 

You have many options for managing and avoiding patent infringement risk but only experienced intellectual property counsel will be able to identify the risks most relevant to you and craft a personalized avoidance strategy. For more information, please contact an Alabama patent litigation attorney at AdamsIP in either our Birmingham or Huntsville office by calling 251-289-9787 or by using our online contact form.