An introduction to Patent Infringement and Validity
Intellectual property, including patents, designs, trademarks, copyright and trade secrets, are valuable assets for your business, and it is important to consider early on in the development process how best to protect these assets.
To understand the true value of these assets, it is also important to think about the benefits they bring, as well as the potential effects of third-party intellectual property on your ability to operate your business.
To assist you with this, we have prepared a series of blogs setting out the key aspects of all of these elements. Of course, we are always available to discuss these in more detail with you and provide advice on how IP is relevant to your particular business. In this blog, we are going to look generally at when patent infringement and validity may become an issue.
When do I need to think about infringement and validity?
There are probably three main instances when questions about infringement and validity are likely to be flagged:
- Product Development
- Defending an Infringement Threat
- Enforcement against a potential infringer.
Let’s look at each of these in turn.
Product Development
When you start developing a new product or process, it can be useful to carry out a patent search. Searching for patentability, will look at all known disclosures in the relevant technical field and can be very useful in providing information about what is already known and/or has already been tried. In addition to your in-house knowledge, this can provide a useful starting point for your new development and help reduce wasted effort and expenditure.
An additional benefit of a patentability search is provision of an early indication of potential infringement risk. Understanding early in the development process where infringement risk may lie enables you to develop your product to minimise or remove risk of infringement.
Sometimes, it is not possible to completely eradicate infringement risk, and the patentability search results may have the added benefit of indicating relevant prior knowledge that could assist with a validity assessment of any third-party patents that could be relevant to your new development. Alternatively, at this stage it may be beneficial to carry out additional specific searching to look for relevant prior art to assess validity of third-party patents.
As you progress through the stages of development, it can be useful to reassess both patentability and also potential infringement. It is common before product launch to carry out a freedom to operate assessment, to ensure that you have identified and dealt with any potential infringement risks before launching a new product or process in the market.
Defending an Infringement Threat
Sometimes, despite best endeavours to avoid infringement, you may find yourself of the receiving end of a threat of infringement action. This can be very stressful, but the important point is not to panic. The first action you should take is to contact your IP Attorney for advice. IN additional to an assessment of infringement, it is quite likely that part of that advice will include an assessment of validity of the patent or patents upon which the infringement threat is based.
Enforcement
Whilst the existence of a patent can often serve as a deterrent effect for your competitors, and significant benefit can be derived from this commercially, there are times when you may consider that a third party is operating within the scope of your patented invention and you need to take steps to enforce your rights. There are many stages of enforcement, that are beyond the scope of this particular blog, but one part of that process is likely to include and assessment of both validity and infringement.
Whilst you might expect your attorney to carry out an assessment of infringement before commencing enforcement, it is often prudent to also carry out a validity assessment of your patent too.
Whilst it can be assumed that the examination process pre-grant of your patent gives some indication of validity, it is not possible for the patent Examiner to consider every public disclosure worldwide when assessing allowability of an application. Sometimes, a third party may identify a new prior disclosure that can be relevant to the validity of your patent.
Furthermore, there are often disputes between parties about the exact meaning and scope of patent claims, and this can be relevant to both the issue of validity and infringement.
We can advise you on all aspects of patent infringement and validity, so please contact us, if this blog has raised any queries.
Throughout this series, we will look at aspects of infringement and validity in more detail, so please feel free to browse our website for more information.