Chapter 37 - § 37.9 • CLEARANCE SEARCHES AND PATENT OPINIONS

• Jurisdiction: Colorado

§ 37.9 • CLEARANCE SEARCHES AND PATENT OPINIONS

A patent is a negative right: it allows the patent owner to prevent others from practicing the claimed invention.⁷⁹ However, it is not an entitlement for the patent owner to be able to practice the invention.⁸⁰ In many instances, previously issued patents having a broader claim scope will block the practicing of the new invention. Thus, the patent owner will be prevented from practicing his or her invention because to do so would infringe upon the patent of another. For example, if Party "A" has a very broad patent that covers the basic operation of a mousetrap and Party "B" invents an improvement to Party A's mousetrap, Party B will be entitled to patent the improvement — but Party B will not necessarily be able to practice the improvement. This is because practicing the improvement will infringe upon the basic operation of the mousetrap that was patented by Party A. Without permission from Party A, Party B will be prevented from practicing the improvement. Consequently, clients are well advised to perform clearance searches before embarking on a new product development project.

Sometimes a patent will be located that raises a concern as to whether a client's activities will infringe the located patent. In such an instance, the patent can be evaluated and patent counsel can opine on whether the client's activities will infringe the patent and/or whether the patent is valid. Such an opinion is useful in showing a lack of willful infringement (which can result in trebled damages) if the client is later found to have actually infringed.

§ 37.9.1—Freedom to Operate/Clearance Searches

A freedom to operate search, sometimes referred to as a clearance search, can be a useful tool to a client who is contemplating a new commercial product or service. The purpose of such a clearance search is to identify patents that are currently in force and that might bar the client from being able to practice the new commercial product or service. These searches have to be performed using a cost-benefit approach. Namely, given the fact that there are so many patents to consider, it is cost prohibitive to do a completely comprehensive analysis. Thus, search strategies must focus on the patents that are most likely to be obstacles to the client. For example, patents owned by known competitors and patents directed at the key feature of a new product are often the best patents to focus upon.

§ 37.9.2—Non-infringement/Invalidity...