Discovering -- and protecting against -- adversely held patents.

• Author: Green, Edward H., III

Many business managers understand the competitive advantages gained by protecting their key products, processes, software and methods of doing business with a portfolio of patents. This article briefly explores the flip side of that coin -- a business's pre-litigation options to discover whether its new technology will inadvertently infringe the patent rights of others and minimize damages in that event.

Clearance opinion

Ideally, before a business deploys new technology or incorporates new ideas into its products or processes, it should obtain a clearance -- or "freedom to practice" -- opinion from competent patent counsel. Generally, a patent attorney will discuss the ideas with the employees most familiar with them and will perform or commission a search of the relevant art areas in the U.S. patent database, including published patent applications, to discover patents on the same or similar ideas. If none are found that claim the idea, the business may proceed to develop and market its products with confidence.

However, one or more patents may be discovered that "read on" the proposed idea. That is, the idea squarely meets each and every limitation or one or more of the patent's claims. At this point, the attorney may advise the business how to design around the patent, typically by omitting at least one limitation recited in the patent's claims from the business's products or processes.

A clearance opinion is typically a written report, identifying the relevant patents discovered during the search, in many cases discussing each independent claim and detailing why the business's proposed idea does not infringe. The cost of a clearance opinion varies, depending on the patents discovered during the search, but typically ranges from $6,000 to $10,000.

Infringement analysis

A patent discovered during a clearance search, or one that the business otherwise becomes aware of, that reads on some idea or technology in the business's current or planned products may warrant an infringement analysis. Typically, this involves a thorough assessment of the identified patent in light of the potentially infringing idea or technology. The patent attorney will first order the prosecution history of the patent, the written record of all communications between the applicant and the U.S. Patent and Trademark Office, from the time the application was first filed until the patent was issued.

Often, through amendments to the initially filed claims and through...