United States: Can I Patent And Market My Invention?

Last Updated: September 26 2018
Article by Shawna C. Lemon, Ph.D.

Once you have an idea for a new invention you may ask yourself whether your invention is patentable and whether you can commercialize your invention.

While there is no surefire way to know if your invention is patentable before filing a patent application, there are measures you can take that will give you a better idea about the patentability of your invention and provide you some guidance regarding whether you can market your invention without running afoul of a third party’s rights.

Is my invention patentable?

In the United States, there are three types of patents: utility, design, and plant.  The type of patent generally associated with "patents" is the utility patent, which is also and the type granted most frequently. The United States Patent and Trademark Office (“USPTO”) defines patentable subject matter as any "new and useful" process, machine, article of manufacture or composition of matter. In order to obtain a patent, the invention must be determined by the USPTO to be new, not obvious in view of existing technology and useful.1  One way of determining whether your invention may be new or not obvious is to conduct a patentability search.  A patentability search allows you to investigate whether your invention may be patentable by searching relevant prior art, that is, information indicating that your invention is already known.

Almost ten (10) years ago, prior art searching by patent practitioners generally included reviewing the USPTO website and some Internet searching, but not necessarily with the expectation of discovering useful information on the Internet. Now, Internet searching is a very important aspect of a prior art search strategy often providing relevant prior art that may ultimately impact the patent strategy. 

The volume of information on the Internet increases every day. Much of the information that may be pertinent to a patent search strategy is now available from various sources and is often credible. The Manual of Patent Examining Procedure ("MPEP") § 2128 used by the USPTO examiners states, "[p]rior art disclosures on the Internet or on an online database are considered to be publicly available as of the date the item was publicly posted. Absent evidence of the date that the disclosure was publicly posted, if the publication itself does not include a publication date (or retrieval date), it cannot be relied upon as prior art."

A time-efficient and cost-effective patentability search typically focuses on US patents and patent applications as well as relevant information on the Internet as this is the information that patent examiners typically search. However, patent examiners have access to numerous databases and may locate references not found in a patentability search.  Nonetheless, a patentability search whether performed by you, a patent practitioner (patent attorney or patent agent) or a professional search entity can help provide an indication of the patentability of your invention. Moreover, the results of a patentability search may assist your patent practitioner with the preparation of a patent application (if you decide to proceed) by helping to identify novel features of the invention.

Can I market my invention?

A US patent provides the patent holder the right, for a limited time, to exclude others from making, using, offering to sell, selling, or importing into the US the patented subject matter without the patent holder’s permission.  As discussed above, a patentability search involves a review of prior art in an effort to assess the novelty and nonobviousness of the invention.  A patentability search does not address infringement.  While it is possible that you may have a patentable invention, you may not be free to practice your own invention.  If you are concerned about possible infringement, you may consider a clearance search also known as a freedom-to-operate (FTO) search and possibly a non-infringement analysis.

Where a patentability search involves an analysis of patents, patent applications, publications, information that can be found on the Internet, etc., clearance searches are limited to patents, and in particular, focus should be directed to patents that have not expired. However, there may be instances where published applications may be considered where the patent application is of particular interest and issuance appears imminent.

A clearance opinion is based upon a clearance search and is an opinion as to whether a product or certain activity may infringe any identified valid and enforceable patents. Clearance opinions are based upon the territory where you wish to make, use or sell your invention and are time sensitive.  That is, a clearance search and opinion are relevant for certain jurisdictions and can become stale as new patents issue, for example, the USPTO issues new patents every Tuesday. 

It is the claims of the patent that are considered for a clearance analysis. Such an analysis typically begins with a comparison of the elements of the independent claims with the elements of your invention.  If the exact elements of the claims of the patent are met, this constitutes literal infringement. However, even if literal infringement is not found, there is a risk of infringement under the Doctrine of Equivalents. The Supreme Court provided the following guidance regarding equivalency under the Doctrine of Equivalents by stating, “[i]f two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape." Thus, a claim may be literally infringed or infringed under the Doctrine of Equivalents. If a claim is found to be infringed, in order to avoid liability, you must invalidate the claim or find a way to work around the claim, i.e., a design around. 

Further, even if it is determined that no claims of any patents located during a clearance search are infringed, there is no guarantee that you are “clear” to practice your invention.  As such, a clearance or freedom-to-operate opinion does not actually provide clearance or the ability to operate one’s invention freely.  Nonetheless, such an opinion can provide preliminary guidance as you decide whether to proceed with pursuing your invention.

In some instances, at least one patent located during the clearance search may be of particular interest.  A non-infringement opinion may be obtained in order to assess any potential exposure associated with the patent(s) of interest.  In a non-infringement opinion, the patent attorney will consider the claims of a specific patent. Additionally, the patent will also be considered in view of the prosecution history of the patent in order to provide a better understanding of the meaning of claim terms and the possible interpretation of the same by a judge or court of competent jurisdiction.

Historically, a non-infringement opinion could be asserted as a defense against willful infringement to avoid treble damages. Now, it is not necessary to obtain such an opinion, but non-infringement opinions assist in showing the alleged infringer’s “state of mind” during the time of the alleged infringement if such an opinion is obtained before the alleged infringing activity and may decrease the chances of being found to have willfully infringed.

Conclusion

In summary, patent-related searches and opinions can be useful resources in determining whether you should obtain patent protection and/or commercialize your invention. Inventors should conduct their own general patent search. Once it is confirmed that you can’t find your invention using the Internet and other databases or have identified what you believe to be the closest prior art, consider continuing your efforts with a patent practitioner. Internet searching generally does not replace prior art searches performed by patent practitioners or professional search entities. However, a few minutes to a couple of hours spent by a patent practitioner using a search strategy including specific or technical terms along with more common or lay terms may save you time and money and complement a more detailed search and patent strategy.

Footnotes

1 35 USC §§ 101, 102 and 103

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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