How can you minimize Patent infringement risk



We always emphasize pawn protection of intellectual Property but we ignore the other side of it. Protection of intellectual property is important but it is equally important to the intellectual property that belongs to the third parties. Initial due diligence, before product launch can be immensely useful for your business to avoid undesirable surprises in the future and to have mental peace.

Rights of the patent holder:

It important here to know patent rights are territorial which means that an Indian Patent is enforceable is only in India and Similarly US patent is enforceable is only in the US. The patent holder has right the to prevent third parties from making, using, selling, offering to sell, and importing the patented product in the country, where it has patent means, If you want to manufacture a product in India, there exists a patent that you might infringe. The owner of that patent can prevent you from making, using, selling, offering to sell, importing that product to India. The term Patent infringement is as such not defined in the patent act but a violation of the right of the patent holder itself is patent infringement

Clearance search (Freedom to operate search):

Clearance search or freedom to operate search is the method to minimize the patent infringement risk. Clearance search is done to assess minimize the risk of patent infringement. This search is Jurisdiction specific and can be done where your want to launch your product unlike novelty or patent search only valid in enforcing a valid patent taken into consideration for the search.

Steps of Freedom to operate (FTO) search:

  • Segregation and nomenclature of the components of the product.
  • After this patent search is done to identify the patent as well as the patent application related to each component of the product.
  • After this categorize the documents based on their relevance to the product for which you are doing FTO.
  • List down the claims of the patent in an excel sheet and highlight the portion of the claims that overlap the product feature and product component
  • Opinion on infringement risk as per national law.

There are 8 critical things that you might take into consideration while performing a search and write on the opinion on infringement risk

  • Legal status of the patent is checked properly. This is tricky so you should check this patent on an official database of the country.
  • All Patent rights are Jurisdiction specific. You need to be precise in terms of FTO search as well.
  • You must be able to differentiate between abundant application, lapsed and expired patents. You should be extremely careful in case of the lapsed patent because of the possibility of the lapsed patent being restored.
  • Calculation on the term of the patent is very critical for FTO search. You must learn how to do it.
  • Ordinary application might expire the pawn. Expiry of 20 years from the date of priority.
  • Whereas PCT national phase application might expire a pawn expiry of 20  from the international filing date. Don’t miss PCT applications because they are likely to International phase in the country in which you are performing an FTO search.
  • To perform FTO search. Its if to consider a timeline to at least  22 years, in case there are sensitive application set you found during the search
  • It’s important to monitor them periodically to see how they are getting prosecuted.

Leave a Reply