Don't Forget Patent Infringement
There's no doubt that it's exciting to deal with innovators. Great plans are made. Foreign markets are considered and, of course, patent applications are filed. But it's important to remember that patents can also bring your project to a grinding halt. Nothing can throw a project into disarray like a cease and desist letter.
Patents can bring your project to a grinding halt
So how can you avoid the inconvenience and anxiety associated with such a letter? Most patent attorneys will recommend that you carry out a search before filing a patent application. But such searches are to assess whether or not you will have problems with obtaining patent protection. They are not intended to investigate whether or not you might be infringing someone else's patent rights.
Novelty searches are not intended to investigate infringement
When a patent application is filed, the examiner assigned to your patent application carries out a search. That search is to investigate whether or not the invention has been described in any published document anywhere in the world. Possibly the largest repository of published documents are the various patent offices around the world. The patents are all indexed according to an international classification.
The purpose of a pre-filing search is to pre-empt the examiner. A hit can save you wasting money. As set out in one of my other articles, such a search can have significant value.
However, such searches are not patent infringement searches. It is possible that they would reveal patents that would be infringed by the exploitation of your product. But they are too broad in scope to provide a level of security against a threat of infringement proceedings.
A patent infringement search attempts to locate patents that are in force in a particular jurisdiction. It is those patents which can block the roll-out of your invention in that particular jurisdiction. Such a search will cover only the "in force" period, which is the last 20 years. A pre-filing or "novelty" search should cover all published records. These go back almost 40 years. It follows that infringement searches are necessarily more focused than novelty searches.
Carry out the infringement search before making a commitment
Patents are jurisdictionally limited. So patent infringement searches should be carried out in the particular jurisdictions in which you are intending to commercialise the invention. It stands to reason that they should be carried out before making any commitments in those jurisdictions.
Drop me a note at firstname.lastname@example.org or call me +61 7 5529 9396 if you have any questions about infringement searching.