By Eric Kirsch
You've recently released an exciting new product that is starting to get a buzz on the web and some traction in the marketplace, only to receive a letter from someone you've never heard of accusing the new product of patent infringement. You don't have an in-house patent counsel and you don't have the budget to hire a team of big firm, $1000-an-hour lawyers to conduct an investigation. What do you do?
Hire a competent patent attorney who understands your company's technology (or who can get up to speed quickly) to analyze the patent and compare it to your product. Even though there have been some changes in the law recently, and some might say that an opinion is unnecessary, the best approach is to have an experienced patent attorney study the patent and provide either an oral or a written opinion, and prepare a reasoned response to the letter accusing the new product of infringement.
How do you know you're getting good advice? How do you know if patent attorney you hire is competent? Here are a few tips:
1. The File History
The first thing an experienced, competent patent attorney should do is obtain and analyze the file history of the patent-in-question. The file history is a record of the application process that led to the issuance of the patent you've been threatened with. Why is this important? Because there are often statements made during the application process that will help a patent attorney (or a Judge) understand what the patent covers, or more importantly, what the patent does not cover.
2. The Accused Product(s)
Next, the patent attorney you hire should carefully review the product or products that are accused of infringement. If the product is not technically complex, this may only require a visual inspection. If the product is complex, the patent attorney may have to analyze schematics, source code, deposition layers, or a DNA sequence of your product. The level of detail required is usually a function of the level of detail spelled out in the claims of the patent you've been accused of infringing (the claims are the numbered paragraphs at the end of the patent).
Once the technical analysis is complete, the patent attorney must then compare the accused product(s) to the claims of the patent. If the accused product(s) does not infringe any of the claims of the patent, the patent attorney you've hired should write an opinion letter stating exactly what he or she has done (e.g., studied the patent, the file history and the accused product(s)) and why each claim of the patent is not infringed. Note - if your patent attorney is willing to write such an opinion, you may not need a prior art search, unless you are a belt and suspenders type.
3. The Prior Art Search
If one or more claims of the patent-in-question are infringed, a prior art search or a design around (discussed later) may be required. A prior art search is simply a search for patents, technical articles, books, presentations or products that came before the patent-in-question. The patent attorney you hire should suggest a reasonable priced, effective search firm to locate prior art. Don't be afraid to set dollar or hour limits for the search firm - it's your money. Also, do not overlook your own engineers and scientists as a valuable resource for locating prior art. Your own engineers and scientists usually know who was doing what and when they were doing it better than a search firm, and this information could provide valuable leads for locating prior art.
Generally speaking, there are two types of prior art: anticipatory prior art; and obviousness prior art. Anticipatory prior art means that each element of a claim is explicitly or implicitly found in the prior art reference. Obviousness prior art means that there is an element of a claim missing from the prior art reference, but adding that element to the reference would have been obvious to an engineer or scientist in the field at the time. If a prior art search locates either type of prior art, the patent attorney you hire should be able to provide an oral or written opinion that the claims of the patent-in-question are invalid. If the patent attorney provides a written opinion, it should include a claim chart mapping specific portions of the prior art reference to each element of a particular claim. Each claim, or at least the claims listed in the accusatory letter, should be in the claim chart.
4. The Design Around
If the patent attorney you've hired can't provide a non-infringement opinion and the prior art search firm didn't locate any satisfactory prior art, a design around may be in order. A design around is simply a modification to the accused product that avoids the claims of the patent-in-question.
A design around can vary in cost depending on the complexity of the accused product and where in the design cycle the product is. Generally speaking, the more complex the accused product is and the closer that product is to its release date, the more expensive it will be to implement a design around. Also, some products are easier to modify than others, for example, software is generally easier to modify than hardware.
If a design around is very costly, a second prior art search or a second look at the accused product(s) might be worthwhile. Further, a design around usually means delay, which may allow a competitor to gain a foothold in a market you expected to dominate. Each of these factors must be quantified and considered carefully before commencing a design around.
Further, before incurring the time and expense of implementing a design around, your patent attorney should opine that each claim of the patent-in-question is clearly not infringed, and should be willing to state as much in writing. The best way to ensure that your patent attorney is willing to write such an opinion (that the design around does not infringe) is to make sure that he or she is involved in the redesign process and has a clear, well thought out strategy to avoid the patent-in-question.
5. Some Final Thoughts
Providing reliable, competent advice on a patent infringement matter comes from a thorough understanding of three spheres: the law; the accused product and the prior art. The patent attorney you hire should possess a thorough understanding of all three spheres, otherwise you may not be getting reliable advice.
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