​Following up on last week’s post “do I need a patent to sell my product”, the second most common question I receive is “why doesn’t my patent protect me from infringement?” This misconception is linked to the false idea that a patent is a government grant to make, use or sell a product. As discussed in my last post this is not how patents work. As a recap, a patent is a right to exclude, not a right to make, use or sell. Then how does an inventor obtain clearance to sell their product[1]?  One answer is a freedom to operate (FTO) opinion.
 
But doesn’t the fact that I have a patent mean I have the sole rights to my invention? Generally, “Yes”, as to your improvements on existing technology; but “No” with regard to every element of the working embodiment. If your invention is a completely novel and original concept that does not rely on any prior technology it may be the case that no patents cover your product. However, this is rarely the case. Most advancements in science are improvements on prior technology. To paraphrase an old axiom, “we see further by standing on the shoulders of giants.” The shoulders can be the great minds of history, da Vinci, Newton, Edison or Einstein, or they can be modern giants, Bezos, Jobs, Gates or Musk. If the shoulders happen to be those of Elon Musk and you have invented an improvement on Tesla’s patented battery technology you can still get a patent on the improvement. However, if your improvement requires the underlying patented battery, and you want to sell the improved battery, you would likely be infringing Tesla’s patent. This is an extreme example of how a patented invention could still infringe another’s patent, but it’s not an uncommon fact pattern.
 
There are a few ways of approaching the FTO. First, if a third party is making your product the inventor can attempt to obtain an indemnification from the manufacturer. Second, if your product does not contain any novel aspects, and it is the same or very similar to products sold or described in the past, you may be able to rely on the principle that your product is in “the prior art.”[2] In this case there should not be any patents claiming your product, and if there are they should be expired or invalid. The third approach is to review relevant U.S. patents and published patent applications to determine whether your product infringes any issued claims, and potentially any claims that may issue from published patent applications. If potential infringement is clear, a license or assignment of the patents may be necessary. Many FTO opinions will combine all three approaches often taking the position that your product should not infringe any patents, that any potentially infringed patent should be licensed, that the patents may be invalid for encompassing elements of the prior art, and/or that any third party manufactured elements are indemnified from infringement. Additionally, the clearance should be conducted by a competent patent attorney with experience in your field of technology.
 
It is not inconceivable that your product may infringe multiple patents covering different aspects of your product. Let’s say your product is a car and you have patents on a novel electrical motor using solar power generated by panels on the roof of the vehicle. Sounds like a new and unique invention, right? You have the patents on the design of the car, the solar panels and the motor, you should be able to sell the car free and clear? Not so fast (car pun intended). Your car is going to have a lot of other features including, headlights, airbags, a music system, electrical components, shocks, brakes, bumpers, etc.….  All of these elements may be covered by patents, and if you want to sell the car you should have an FTO that you do not infringe any of these patents. Again, this may seem like an extreme example when the average inventor is not selling cars, but every product can contain elements and/or materials that are potentially covered by existing patents. 
 
Navigating the marketplace can be a difficult and confusing endeavor. Do you need an FTO to sell your product? The short answer is “no.” This is a business decision in which the costs of obtaining the FTO must be weighed against the risk of being sued for damages and being enjoined from selling your product. While an FTO is not a total shield from any claim of infringement it does provide a general understanding of the patent landscape and a professional view of the potential infringement risks. It is advisable to engage a knowledgeable patent attorney to assist in identifying these risks and to create a plan to protect your business.       


[1] For the purposes of this post I will refer to the invention as a “product”, but of course your invention can be a method, process, composition of matter, or design.  Additionally, I will focus on the concept of “sale” with regard to patent rights, but note that patents also cover the right to make, use, and/or import.

[2] As discussed in my post “Five Early Steps to Patent Your Invention”, “prior art” includes “physical embodiments (e.g., marketed products) or published disclosures (e.g., articles, patents, or applications) in any language, anywhere in the world.” 
 

​One of the most common questions I get from inventors is “do I need a patent to sell my product?” The short answer is “no”. Patents are often incorrectly seen as permits from the government allowing businesses to market their products. This common misconception pervades many people’s understanding of patent law. Unfortunately, patent rights are often counterintuitive to people unfamiliar with patent law. In truth, patent law concepts are often misunderstood by most non-IP attorneys.  
 
Let’s start at the beginning. What is a patent? A patent is “the right to exclude others from making, using, offering for sale, or selling” an invention in the United States or importing the invention into the United States. A patent does notgrant the inventor the right to make, use or sell the invention. What a patent actually does is provide a limited period to exclude others from making, using or selling the claimed invention (or importing the invention into the U.S.).  In return the public receives the addition of the invention into the store of knowledge upon which other inventors can learn and build. Finally, after the expiration of the patent, the use of the invention passes into the public domain. This is the trade-off that patent law is based on, a limited period to exclude in exchange for the contribution of knowledge to the public.    
 
To summarize, there is no requirement to have a patent to sell a product, and a patent does not grant you a right from the government to sell. Then why do people obtain patents? One of many answers is that if the patent is drafted and prosecuted properly they are invaluable business assets. What must always be considered when obtaining a patent is that it is a business decision in which the inventor must weigh the costs and benefits.  
 
What are some of the costs of a patent?
 
The initial costs include USPTO filing fees, as well as attorney drafting, filing and prosecution costs. These costs can be substantial for inventors, and unfortunately come during the formative stages of business startup when resources are at their lowest. While inventors can file and prosecute their applications pro se, the downside of not properly drafting and claiming your invention greatly outweigh any savings from foregoing an experienced patent attorney. Specifically, an improperly claimed invention can result in an essentially useless patent no matter how innovate and groundbreaking the invention. Litigation costs are another patent expense. While litigation costs vastly outweigh application costs, litigation generally occurs later in the business life cycle. In contrast, patent application costs must be undertaken either before or shortly after marketing of your product or patent rights can be permanently forfeited. 
 
What are the benefits of a patent?  
 
Patent benefits can be divided between swords and shields. Offensively patents can drive funding by demonstrating to investors that you have a serious business plan backed by intellectual property protections. Patents can also generate income through licensing fees or outright sales. Additionally, patents can be asserted offensively in litigation to seek damages or compulsory licenses. Defensively patents can exclude competitors from benefiting from your invention. Primarily this is accomplished by the publication of the patent, which puts others on notice that you have claimed rights to your invention. If necessary the patent can then be asserted in litigation to stop others from profiting from your invention either by an injunction, license, royalty or combinations thereof.
 
At the cost of sounding repetitive, obtaining a patent is a business decision with costs and benefits. If you do not foresee profits exceeding the cost of the patent, it’s probably not worth pursuing. Conversely, if you are interested in licensing your invention a patent is practically a necessity. If you are looking to manufacture and sell your product yourself it will become a cost-benefit analysis. How much will the patent cost to obtain? How much market share will you lose if others can copy your invention? How much will it cost to enforce your patent either through cease and desist letters or litigation? Will the notice function of the patent publication inhibit potential infringers? Can you protect your invention through the use of trade secrets (topic for another day)? All of these questions should be considered and weighed when deciding whether or not you should seek to patent your invention. Carefully and deliberately consider all of your options, and preferably consult a registered patent attorney to get a better understanding of how a patent can enhance your business.  

As a patent attorney my general advice for independent inventors is to always have professional assistance when preparing and filing your patent application. However, it is undeniable that preparing and filing a patent application is an expensive process that often comes during business startup when financial resources are at their lowest. The following are a few steps that any inventor can take to begin the patenting process. Even if you ultimately decide to seek professional help, taking these early steps can help crystalize the invention in writing and reduce professional drafting costs down the road.   
 
1.Preliminary “Knock-Out” search
 
Novelty and non-obviousness are two of the major milestones to overcome before the United States Patent and Trademark Office (USPTO) will allow an application. The question is whether your invention is new and not obvious in view of the “prior art.” Examples of prior art  are physical embodiments (e.g., marketed products) or published disclosures (e.g., articles, patents, or applications) in any language, anywhere in the world. 
 
Novelty generally means that the invention is not anticipated or the same as the prior art. The novelty hurdle is often easier to overcome because at least one or more element of your invention usually differs in some manner from the prior art. Obviousness is often the bigger obstacle. Your invention must not be obvious in view of prior art individually or in combination with multiple pieces of prior art.  As an overly simplified example, if your invention contains elements A, B, and C, the USPTO can reject the application as obvious if: (i) prior art 1 contains element A and B; (ii) prior art 2 contains element C; and (iii) there is a reason to combine the prior art. 
 
One way to search for prior art is to perform an internet search (e.g., google or yahoo) for similar inventions, and then check the USPTO patent and application databases (uspto.gov).  The USPTO databases are generally user friendly, but first time searchers should understand there is a skill to performing accurate and relevant searches. While it is nearly impossible to definitively say any patent application will be patentable a Knock Out search can provide a modicum of optimism. Essentially, assuming you do not find anything exactly on point in your search (no anticipation-no “Knock Out”) it becomes more reasonable to proceed with the patenting process.[1]
 
2.Decide when you need to file your patent application
 
In 2013 after the passage of the America Invents Act (AIA) the United States joined most of the industrial world in becoming a first to file instead of a first to invent country.  The long and short of this change is that there is now a greater incentive to file your patent application as soon as it is ready.  Additionally, inventors should file their applications within one year of any offer for sale or public disclosure of the invention to ensure the offer for sale or disclosure does not become prior art against your own invention. If you think you may need international protection the timing of filing becomes even more complicated, and you should seek professional assistance.  
 
3.What kind of patent application should you file?
 
There are three kinds of patents, (i) utility, (ii) design, and (iii) plant (for the purposes of this post we will not discuss plant patents).  Further, there are two types of utility applications, namely, provisional applications and non-provisional applications.  
 
Utility patents are for functional inventions (e.g., products, methods and processes), while design patents are for ornamental features of a product (e.g., the shape of an iPhone or the design of a piece of furniture).  
 
Provisional utility applications can be thought of as an optional bookmark that must be converted to a non-provisional patent application within twelve (12) months of filing or the provisional application will go abandoned.  Provisional applications have reduced filing fees, allow the inventor to secure their filing date (for prior art purposes), and provide additional time to determine the feasibility of pursuing the invention. Additionally, provisional applications are not examined, and therefore usually have no prosecution costs.
 
Non-provisional utility applications have higher USPTO filing fees to pay for the examination, and require prosecution (assuming you do not receive a first office action allowance, a very rare occurrence).  You are not required to file a provisional application to file a non-provisional application, but you must eventually file a non-provisional application to ultimately receive a utility patent. As discussed above the provisional application is the optional bookmark, the non-provisional application is the application that eventually (hopefully) becomes a patent.      
 
4.Begin drafting your application and preparing drawings 
 
I would generally suggest non-professionals[2]start with the specification (the text of the application) when drafting utility applications. Provide a detailed description of your invention, explain what your invention does, and how its special and unique features provide improvements over the prior art.  Include detailed ways of constructing and using your invention, variations on how your invention can be built or used, and various materials that can be used to manufacture and/or practice your invention.  Where helpful provide drawings to explain how your invention works providing reference numbers in the drawing that are cross referenced in the text of the specification.  A good starting point is to find patent applications on similar subject matter (possibly the ones you found in step 1) and use them as an outline. 
 
For design patent applications you will need a very short specification and at least six drawings from different perspectives of the ornamental design. While design applications are less complicated to draft and file than utility applications there are still many aspects of the drawings, as well as potential prosecution, that are greatly benefited by the assistance of counsel.  However, even if you are not employing a patent attorney to prepare the design application it is highly beneficial to employ a professional draftsman (e.g., graphic artist) that is familiar with USPTO drawing requirements.[3]   
 
5. Claim drafting
 
The scope of protection provided by a utility patent is defined by the claims.[4]The claim language acts similarly to the property description within a deed for real property. The patent claim defines the invention (land) that is secured by the patent (deed) for the inventor (land owner).[5]The claim defines the meets and bounds of the protection provided by the patent.
 
The language employed in a patent claim must be found and defined in the specification. Support for the claim language is one of the essential features of the specification of a patent application.  In practice, the USPTO examiners will often read the claims first and then look to the specification to answer questions about the claim language. If proper support/clarification cannot be found the USPTO may issue rejections based on written description and indefiniteness (topics for another day). 
 
Further, the patent claim must not encompass subject matter outside of the invention disclosed by the inventor. This is one of the balancing acts necessary for a successful patent claim. The claim should define the invention as broadlyas allowably supported by the specification without encompassing subject matter already known in the prior art.  Unfortunately, for most inventors this is an aspect of patent drafting where science tends to give way to law and form. 
 
Final thoughts 
 
Hopefully the above discussion provides encouragement, and does not frighten away too many budding entrepreneurs.  What should always be noted is that pursuing a patent is a business decision in which the inventor must weigh the costs and benefits. Patents can be exceedingly helpful tools in advancing a business. The patent can become a shield to protect against illicit competition and a sword to provide additional funding sources through investments, licensing or assignment. But like most things in life, if you decide filing a patent is worth doing, it’s worth doing right.  Take your time, draft a detailed application, tweak it, improve on it, consider seeking professional advice, and above all don’t be so intimidated by the process that you never begin.  


[1]For most independent inventors and small businesses it is often not worth the effort to predetermine the USPTO’s views on obviousness.  This is because the cost of properly analyzing obviousness often exceeds the cost of actually drafting and filing the application. 

[2]There are two main thoughts on patent drafting, start with the specification or start with the claims.  The second method, employed by many patent attorneys, is to start with the patent claim. Patent attorneys often use this drafting method because the specification must support the claims and if specific support is not provided valid claims cannot be issued.  The idea is to get the claim language down, and then draft the specification to specifically define the claim terms.  The claim terms should then be used throughout the specification so that support can be pointed to when needed during prosecution before the USPTO, and potentially later in litigation.          

[3]For similar reasons a knowledgeable draftsman should be used for the preparation of drawings for a utility application. 

[4]The scope of the protection provided by a design patent is defined by the drawings. 

[5]Interestingly, and actually important for first time claim drafters, is the fact that much like a property description in a deed, each patent claim no matter its length is one sentence with one period.