​Does a patent protect me from infringement?

​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.”