A U.S. patent provides its owner with the right to exclude others from practicing the claimed invention but does not provide the owner with the right to freely practice the claimed invention.

When determining whether an invention is patentable in the United States, a patent examiner searches other patents, products, articles, and the like that disclose existing, related technologies. The invention is then compared to the existing technologies. If the examiner determines that the invention is novel and nonobvious in view of such existing technologies, then the examiner grants a patent to the owner.

Oftentimes, inventions are an improvement on an existing technology. If the existing technology is still patented, then the patent on the existing technology, if broad enough, could exclude a new inventor from practicing their improvement, even if they manage to obtain a patent on the improvement.

Further, patent examiners in the United States do not examine the legality of an invention. Therefore, an inventor could actually obtain a patent on an illegal technology, but the grant of the patent is not authorization to practice the illegal technology in the United States.

An Example

Assume that a three-legged chair was the only type of chair that existed and a patent was granted for a chair that includes “a base and three legs extending from the base.” Then, assume that a new inventor comes along and obtains a patent for a four-legged chair, which provides more support and stability compared to a three-legged chair. Like the three-legged chair, a four-legged chair also has “a base and three legs extending from the base.” Therefore, even though the new inventor has a patent for a four-legged chair, the previous inventor’s three-legged chair patent could prevent the new inventor’s “freedom” to make, use, sell, or offer to sell their four-legged chair.

To actually produce and sell the four-legged chair, the new inventor would have to wait until the three-legged chair patent expired. Other options to navigate such a roadblock may be available, such as the new inventor requesting a license to use the previous inventor’s three-legged chair patent.

Takeaways

When seeking patent protection, it is important to:

• remember that obtaining a patent does not automatically grant a patent owner with a freedom to practice the claimed invention in the United States; and
• consider conducting a patentability and a freedom-to-operate search and analysis.

If you want assistance with such a search and analysis, give us a call!