© 2008 Robert Plotkin, P.C.
Obtaining a patent on one of your inventions gives you the right to stop other people from using that invention without your permission. What many people don’t know is that obtaining the patent does not actually give you the right to make, use, and sell your own invention. For example, if someone has a patent on the pencil and you obtain a patent on the pencil with an eraser, then when you sell your pencil with eraser you are infringing the pencil inventor’s patent. In this situation, the pencil patent owner may either flat-out refuse to allow you to sell your own invention or require you to pay him for the privilege of doing so.
To avoid being blindsided by someone else’s patent in this way-and thereby wasting the time and money involved in obtaining a patent and developing a marketable product or service-it is best to perform a “freedom to operate” investigation (also called a “clearance” or “right to use” investigation). If you do not perform such an investigation and you are sued for infringing an existing patent that you knew about, you can be required to pay triple the damages that you would otherwise be required to pay. A freedom to operate investigation can save you from paying such triple damages.
A freedom to operate investigation involves performing a thorough search for existing patents that might cover your invention and analyzing those patents to determine whether they would in fact subject you to patent infringement liability. If your patent attorney performs such an analysis and concludes that your invention does not infringe any existing patents, such a legal opinion assuming it was the result of a thorough and objective investigation can be used to demonstrate that you did not wilfully infringe another’s patent, thereby avoiding a tripling of damages.
A freedom to operate investigation can be valuable to perform even if your invention is not patentable. Some inventors assume that if their invention is not patentable, they should give up and not pursue a business based on their invention. This is not necessarily true-many successful businesses are launched without any patents. However, it is important to perform a freedom to operate investigation to determine whether marketing your invention will infringe anyone else’s patents. A freedom to operate investigation may be even more important to perform in this situation precisely because your lack of patents leaves you without any ammunition to use against someone who sues you for patent infringement.