PATENTABILITY AND FREEDOM TO OPERATE ARE NOT THE SAME
EMPOWERING INDIVIDUALS TO MAKE THE BEST DECISIONS WHEN CONSIDERING THEIR INTELLECTUAL PROPERTY RIGHTS
PATENTABILITY VS. THE RIGHT TO PRACTICE
Patentability is the question of whether your invention can be patented. Once you obtain a patent, you are not receiving a right to practice your invention; you are provided a right to prevent others from practicing your invention (often referred to as the right to exclude).
UNDERSTANDING FREEDOM TO OPERATE (FTO)
If you want to practice your invention, a freedom to operate ( FTO ) study assesses the risk of patent infringement if your product is brought to market. Patentable inventions are usually just a small part of a product .
THE IMPORTANCE OF FILING DATE IN PATENTABILITY
Your patent application’s filing date will help determine whether you can get a patent from the U.S. Patent and Trademark Office ( PTO ). The PTO cannot tell you that your invention is not patentable based on inventions and other information that arise after your filing date.
PRIOR ART AND NONOBVIOUS FEATURES However, all the information available prior to your filing date can block the granting of your patent application claims. Although every bit of public knowledge can be applied against your application claims , the claims need only one new nonobvious feature to qualify for patentability .
WHAT CONSTITUTES INFRINGEMENT
Even if just a single patent claim covers your product, the patent holder can prevent you from making, using, selling and offering the product. For a product to be covered (i.e., infringe), each and every requirement in a claim must map directly or as an equivalent to an element or feature in the product. If a single element among all the claims is missing from the product and has no equivalent, the product will not infringe such patent. An FTO study includes such an analysis of the relevant patents .
FILING DATE AND ITS ROLE IN FTO
Your patent application’s filing date is also relevant for FTO analysis. For the most part, patents granted after your filing date cannot be infringed by a product as shown in the patent application.
DEFENSIVE PATENT FILING
Typically, patent applications are published. Upon publication, all of the disclosure becomes available as prior art to subsequent patent applications. Hence, a patent application may even block the granting of a subsequent patent application. In other words, a patent application publication
can block patenting by another. Thus, there are defensive aspects that create significant motivation to file a patent application.
It is not uncommon to have a product that is both covered by a patent and potentially infringing of another’s patent. A classic example is to think of two patent holders, one who owns the patent for a stool and another who owns the patent to a chair. In this hypothetical situation, the “chair” is just a back support attached to a stool. The person wanting to sell the chair might have a patent covering his or her improvement to the stool, but that person would need a license to the stool patent if he or she wanted to sell chairs on the market.
EXAMPLE: THE STOOL AND THE CHAIR
WHY PATENTS ARE EXCLUSIONARY RIGHTS
This infringement by a patented product highlights why patents are referred to as exclusionary rights . A patent allows one to prevent others from making, using, selling and offering the patented product for sale. Patents do not confer an affirmative right to bring your product to market even if covered by your patent.
CONTRIBUTORS
George Chaclas is a partner at Day Pitney and the chair of its Patent Prosecution and Client Counseling Group. gchaclas@daypitney.com
Our Intellectual Property and Technology Group Every day, Day Pitney intellectual property attorneys help clients acquire, secure, transfer, defend, enforce and understand their intellectual property rights. We prosecute patents and trademarks; negotiate and draft agreements for the license and sale of intellectual property rights; litigate intellectual property disputes in federal and state courts around the country, including before the International Trade Commission (ITC) and the U.S. Patent and Trademark Office; and advise clients on the entire array of evolving intellectual property issues modern businesses confront, including workplace policies relating to Internet access and use, social media, and privacy.
Eric G. J. Kaviar is counsel at Day Pitney and advises intellectual property owners—from Fortune 500 companies to established entrepreneurs and start-ups across various industries—on disputes and litigation, including patent, trademark, and trade secret matters. ekaviar@daypitney.com
Emily Ferriter Russo, an associate at Day Pitney, started Patently Enabled , because she believes in empowering individuals to make the best decisions when considering their intellectual property rights. eferriterrusso@daypitney.com
Thank you for considering this post, which is a general summary meant to reduce complex issues for general practitioners and inventors. It is not intended to be exhaustive by any means. For any comments, questions, or other inquiries, please contact registered patent attorney George Chaclas at Day Pitney LLP. This communication is provided for educational and informational purposes only and is not intended and should not be construed as legal advice, nor does its distribution or receipt create an attorney-client relationship. This communication may be deemed advertising under applicable state laws. Prior results do not guarantee a similar outcome. If you have any questions regarding this communication, please contact Day Pitney LLP at 605 Third Avenue, 31st Floor, New York, NY 10158, (212) 297 5800.
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