Clearing the Air About Product Clearance
June 6, 2006
I hear so many clients tell me that they have wonderful, exciting new products and services. The next thing they ask is “How can I protect them?” We talk about the types of protection that may be available – utility patents, design patents, trademarks, copyrights, or trade secrets.
Inevitably, the conversation turns to where they stand in development, and I ask whether they know of competitors or others in the field that have similar products or services. I can sense the gears are turning (can you tell that I am a patent attorney?), and they come up with a list of their competition. That begs the next question, “Do you know if they have any patents?” Again, I sense the gears turning and, more often than not, the answer is, “Maybe.”
So now we have a client with a new product or service that may not in fact be new, but is really an improvement on what is already on the market, and we have competitors that may have patents that cover similar or even more basic products or services. This brings us around to the next inquiry, “Have you cleared your product?” Then I get that deer-in-the-headlights stare.
Many clients in businesses ranging from heavy manufacturing to financial services are often excited about the prospect of getting patents on their new products, methods or services. But, they never really consider the need to clear their products or services. Rather, they are more concerned with whether or not they can protect their invention. Most of the time, they don’t consider that before they introduce their new widget or new portfolio management tool, that perhaps they should investigate whether that new product may infringe on someone else’s patent. That is, they should have a search conducted to gather patents that are possibly relevant to their product.
Importantly, now that we have access to many patent applications 18 months after they are filed, we can evaluate those applications as well. Clearly, the patents could be enlightening and provide a roadmap of do’s and don’ts.
The published applications may also be enlightening, but in a different sense. They can provide some insight into what scope of protection the applicant (e.g., the competition) believes it is entitled.
Often, the patents that are uncovered can be used as a road map to make design changes to avoid the claims of the issued patents and, when prudent, to design around the claims of published applications. This is true for manufacturing widgets as well as the most sophisticated financial analysis programs. Designing around, particularly during the product design and development stages, is much easier than when you are just about to launch your new product or service, or you are well into production.
I often counsel clients to get the patent attorneys involved at the early stages of design. In the early stages we may conduct a state-of-the-art search to gather reconnaissance and to see what patents and applications are out there. This search can often provide a good understanding of the developments and changes in a particular technology area and can help identify a direction to pursue, or conversely, to avoid.
Later, as the design starts to come together, a more focused search might help to avoid, or help to redirect, an area of design. If, for example, the prior art is crowded, a study and analysis of the Clearing the Air About Product Clearance By Mitch Weinstein issued patents could help to better define the do’s and don’ts. The pitfalls of potentially infringing an issued patent could be identified and a design-around more readily carried out. As the design starts to take hold, a more focused search may help to identify those one or two troublesome patents or, conversely, may provide a level of reassurance that the product is cleared or likely to be cleared for market.
As with so many things in the law, there are a whole host of factors that go into whether, how and when to search. If you are clearly the industry leader and the company that sets the bar for its competitors, you may not have to conduct detailed searches because, chances are, you know the most relevant patents, and many of those may be your own. On the other hand, if you are a newcomer to an industry and entering a crowded field, you may want to search to try to better define your product and develop your niche. The searches should be carried out at a few stages of product development, conception through manufacture or production, but should certainly be carried out early in the research and design stages to get a feel for the state of the art. And, if you are somewhere in the middle of the pack, not the biggest, but not the smallest, and you have a pretty good idea of what is out there, you may want to start looking at clearance once you begin the detailed design aspects of your product.
All in all, experience shows that it is much less costly to clear products during the design and development stage than it is once you are into product manufacture, or after product introduction. The time and effort spent upfront is probably well worth it to avoid that one cease and desist letter or lawsuit months into production of what could turn out to be your most successful product or service. This is particularly true when one small change early on could possibly have avoided the entire issue.