Owning a Patent vs Practicing a Patent

If a person gets a patent from USPTO, it might seem reasonable to think that the owner has the right to manufacture their patented invention – also referred to as practicing their patent. But while it sounds reasonable, it is not true. Having a patent does not give its owner the right to practice the patented invention. A patent gives its owner the right to stop others from practicing their patented invention. This is a very important distinction.

Explaining the Difference

“Rocking Chair” by Sheila Sund from Flickr (Creative Commons License)

A classic way to illustrate this distinction is the chair/rocking chair example.  Let’s say Inventor A patents the chair. Later, Inventor B patents the rocking chair. Inventor B would not have the right to practice Inventor B’s own invention if Inventor B’s rocking chair infringes Inventor A’s chair patent. In other words, Inventor A’s patent on the chair can “dominate” Inventor B’s patent on the rocking chair. Thus, Inventor B’s patent does not grant Inventor B the right to make, use or sell the rocking chair – only the right to exclude others, including Inventor A, from making, using, or selling the rocking chair.

Taking this concept one step further, you should now be able to see why the following statement is also incorrect: “I can’t be infringing anyone, I have a patent.”  As illustrated by the chair/rocking chair example, a later filed patent cannot be used as an infringement defense to an earlier-filed patent.

In addition to helping understand the scope of patent protection, the chair/rocking chair example helps shed light on another commonly misunderstood topic: patentability search vs. freedom to operate search.

Patentability Searching vs. Freedom to Operate Searching

One of the rules for getting a patent for an invention is your invention must be both new and nonobvious compared to inventions that already exist. A “patentability” search is a search designed to find out if an invention is patentable. Thus, a patentability search looks for anything in the prior art that discloses what is believed to be new and non-obvious about the invention. In terms of the chair/rocking chair example, a patent search for the rocking chair would search all prior art for anything that disclosed the “rocking” part of the chair.

“Detective” by olarte.ollie from Flickr (Creative Commons License)

If the chair patent did not disclose any “rocking” element, the chair patent would probably not even be included with the patentability search results for a rocking chair.  For this reason (and a few others), a patentability search is not suitable for determining whether the inventor can use the invention – only whether an inventor can patent the invention. Whether or not one can use an invention is an entirely different search called a “freedom to operate” search.

A “freedom to operate” search is a search designed to find out if a given product infringes any unexpired patent claims. This search is very different – and much more time consuming and complicated – than a patentability search. A freedom to operate search must consider all aspects of the product under consideration, and then look for unexpired patent claims that would “read on” the product. In terms of the chair/rocking chair example, a freedom to operate search would search for any aspect of the rocking chair that was covered by an unexpired patent claim, from the chair patent or any other unexpired patent.

If you have questions about your patents or if you need help with a patentability or freedom to operate search, please send us a message. We have lawyers licensed in Arizona, Connecticut, and New York, and we can handle federal intellectual property matters in any U.S. state and assist with international matters. For even more information, sure to connect with us on Facebook.

Post by patent attorney Joseph Meaney, edited by social media attorney Ruth Carter.

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