What a strange statement you might think. Doesn’t a patent grant the holder thereof an exclusive right to use the patented invention? This is unfortunately a misconception which often leads to infringement of third-party patents. To avoid such, I will address what the purpose of a patent is, how to avoid infringement and, alternatively, how to remedy it.
The right granted
A patent grants its holder a negative right. This means that it relates to “what not to do” instead of the “what to do”. The patent informs third-parties what they are not allowed to do, in order to avoid infringement. Should a third-party unauthorizedly use the invention claimed in the patent, the third-party will infringe on the patent. Accordingly, the patent holder may exercise its right to stop the third-party from further using the claimed invention.
At the same time, the patent does not inform the patent holder “what to do”. Even use of the invention exactly as claimed in the patent is not necessarily allowed for the patent holder. Such use of the patented invention may result in infringement on the patent of another.
The reason therefore is that patented inventions often elaborate on older patented products or processes. Essentially, a patent is granted for this elaboration. However, at its core the patented invention still contains features corresponding to the older patented product or process. Thus, by using the patented invention, the patent of the older product or process is infringed. This concept can easily be explained with the following example:
Party A has a patent for suitcase.
Party B later on obtains a patent for a suitcase having wheels.
Should party B use his patent he will also need to use a suitcase, for which party A has a patent. Thus, party B will necessarily need to infringe on the patent of part A in using his own patent. Therefore, even though party B may stop a third-party form making a suitcase with wheels, party A can stop party B from using his patent altogether. Accordingly, party B may not make a suitcase having wheels.
How to avoid infringement?
In order to avoid infringement, and incurring possible damages as a result thereof, a freedom-to-operate (“FTO”) investigation can be performed. FTO entails the ability to use an invention without infringing on the patent rights of third-parties. A FTO investigation provides an answer as to whether or not a specific invention will infringe on third-party patents. This answer determines whether the invention has FTO.
Conducting a FTO investigation allows for making strategic decisions prior to investing time and money into an invention. Depending on the outcome of the FTO, the decisions may include a potential redesign of the invention or obtaining a license in advance from the other patent holder.
How to remedy infringement?
Should a patent holder wish to use his patented invention, even though it infringes on the rights of another, there are some options available to remedy such infringement. The best option will ultimately depend on the situation at hand. However, here are two potential options to consider.
Firstly, the patent holder may request a license from the other patent holder. This license may take on various forms. Secondly, the patent holder may buy the patent from the other patent holder. Therewith, he is assured that there is no future risk of infringing that patent.
When in doubt?
As with any legal field, patent law has a lot of pit falls. To avoid such, it is always recommended to seek legal advice when in doubt.
Should you have any doubt or questions, you are welcome to reach out to us.
