- Right To Use Search
Also known as a Clearance Search. Before a company introduces a new product to the marketplace, it may request a Right To Use search of issued and currently maintained patents to determine whether or not the new product infringes any patents.
No law firm will write an opinion saying that a product to be produced will not infringe the claims of any patent.
Such an opinion could require detailed analysis of the claims of hundreds if not thousands of patents. It is impossible to uncover every patent that might include claims that could capture the product.
Companies like IBM deal with this well-known problem by analyzing the claims of every patent published in their field of business every Tuesday when thousands of new patents are published. See Official Gazette. That’s how they attempt to be aware of all relevant patents. Of course, they spend thousands per week in order to do that.
It is impossible to conduct a search of twenty years of patents in an effort to discover if any of them could cause a problem for a new product. Such a search is not a patentability search where a patent searcher selects a small group of patents that are relevant to the new product and a decision is made as to whether or not such patents might block the awarding of another patent in the field.
A “clearance” or "right to use" search includes an opinion that the coast is clear and the new product will not infringe any patents. Such an opinion makes the law firm issuing it an insurance company for unknown damages and that is why no law firm will issue such an opinion.
It is not enough to spend a lot of money on a “comprehensive” search. The claims of each patent located in such a search must be studied in detail to determine the issue of infringement which is an entirely different issue than patentability. A new product may be patentable over an old product and still infringe the claims of the older patent. The PTO routinely issues new patents that infringe old ones.
For example, a new patent for a bucket with a handle is awarded as an improvement but it still infringes the claims of the older patent for a bucket only. The new patent is not a defense against a charge of infringement of the bucket-only patent. The owner of the improvement patent may not tell a jury that such patent even exists – its existence is barred from the knowledge of the jury because it is irrelevant on the issue of infringement.
So a “comprehensive” or "defensive" patentability search is a far cry from a “clearance” or "right to use" search. The opinion arising from a comprehensive patentability search may say that the invention appears to be patentable over the known prior art but it does not say that the new product infringes no patents.
There is a safe harbor. Since patents are offensive weapons for 20 years only, anyone can copy a product disclosed in an expired patent without fear of infringement. Today (July 1, 2014) everyone is free to copy any product disclosed in any patent issued on or before June 30, 1994. Tomorrow the 2nd of July everyone will be free to copy any product disclosed in a patent issued on or before July 1, 1994, and so on.
Effective June 16, 1995, patents can extend beyond 20 years from their filing date if the PTO admits that its own internal delays caused a patent to issue later than it should have.
Even IBM’s very expensive defense program is not perfect. All new products run the risk of an infringement suit; that is a risk that it is impossible to eliminate unless expired prior art is copied and if that is the case, the product is not new, of course.
© 1999- 2019 Smith and Hopen, P.A.
SMITH & HOPEN® and logo are federally registered trademarks.