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By: Mark R. Malek

My last article discussed the possibility of obtaining a patent, but that the patent may still infringe on the claims of an existing patent.  Yes, this is a rare situation, but one that is possible nonetheless.

The scenario that was laid out in the last article indicated that you have invented a chair with five legs.  The clear advantage is that this chair is much more stable than the typical chair that you normally sit on with four legs.  You have now filed a patent application on your chair with five legs.  During the examination, the Examiner has cited a chair with four legs as prior art.  Although the Examiner allows your patent, the Examiner indicates in the “reasons for allowance” that none of the cited prior art discloses the advantageous fifth leg and, therefore, the claims in your patent application define over the cited prior art.

Fantastic – you now have a patent.  You now also start manufacturing and selling your chair with five legs.  All of a sudden, you one day receive a letter from the owner of the patent on the chair with four legs.  The patent owner is accusing you of infringing on the claims of the patent, and instructs you to cease & desist from further infringement.  The letter explains that your chair, although it has five legs, still infringes on the claims of the patent.  It goes on to specifically indicate that your chair has four legs, and other stuff, i.e., a fifth leg.

Now you must engage in an investigation to make sure that the claims of the letter are founded.  You probably go to your favorite website on intellectual property, Tactical IP, or even your other favorite website on intellectual property, LegalTeamUSA, you will read one of my articles about what it takes to infringe a patent.  In the above article, it was noted that in order to infringe a patent, you must meet the claim limitations of at least one of the claims.  In other words, your invention has to include all of the elements of at least one of the claims in the patent.  You quickly figure out that your chair with five legs does meet the claim limitations.  Now what?

Now you engage in some sort of settlement negotiation that will hopefully end in a mutually beneficial license for you to continue manufacturing and selling your very lucrative chair with five legs.  You also do some investigation into the success of the patent on the chair with four legs.  Perhaps there is a cross licensing opportunity here.  I will discuss cross licensing in another post.  In short, cross licensing is where you grant a license to the owner of the patent on the chair with four legs a license to your patent so that the four leg chair patent owner can make chairs with five legs, and the four leg chair patent owner grants you a license so that you can continue to manufacture and sell your five leg chair patent.  Much of this is also laid out in my article about the various ways to make money from your invention.

Now you are asking how this could have been avoided.  The answer is a clearance search – also known as a freedom to operate search.  These searches are quite thorough and quite expensive.  This is a really good article on patent searches on IPWatchdog.  I will go into more detail about clearance searches in another post.  Until then, happy inventing!