If you’re wondering whether or not your invention is patentable, you’re probably simultaneously wondering if your invention might infringe on someone else’s patents. These two questions go hand in hand, and they seem to be a rephrasing of the same question: should I go ahead with this? There’s just one problem, answering these two questions is a very different process with a very different price tag.
Here are the two questions restated:
The Patentability Question: In light of the prior art discovered in my patent search, could I get a patent if I applied for one?
The Patent Infringement Question: Could I take my invention to market without fear of being sued for patent infringement?
One question assumes you want to move toward your own patent. The other assumes you want to move directly to the market. This is another reason why these two questions always crop up together. It’s really about determining where to budget money and where to take risks.
Non-Infringement
The process for a non-infringement search and opinion — also called clearance or freedom-to-operate – is much more attorney-intensive. The project should be overseen and managed by a patent attorney, preferably one with litigation experience. This is because the questions all surround potential for litigation. Although the attorney may not do the actual searching, he or she will be responsible at the end for rendering the opinion on your freedom to operate. Carrying that responsibility requires lots of time and in-depth analysis, which is why it costs a lot more to do a clearance search and opinion. Ultimately the attorney has to take your invention and anchor it in safe territory. It may be that there is simply nothing in the patents, or the technology all relies on expired patents.
Patentability
With patentability, you’re trying to answer the question of what the patent office is likely to do if you apply for a patent. A registered practitioner (either attorney or agent) can advise you on patentability. The costs for the opinion are usually significantly lower than a clearance opinion because the time investment is less.
Of course, it’s still possible to be sued for patent infringement if you have your own patent. This happened to Apple last year. They lost a patent infringement case in connection with their cover flow feature. Shortly after losing that case (later overturned on appeal), Apple was awarded a patent for this exact feature.
Getting sued is always a possibility, especially if you have any success. That’s why there’s so much litigation in wireless. If it’s profitable, there will be litigation. That doesn’t mean you shouldn’t go for it.
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