What are the best ways to avoid patent infringement and prior art issues?

It is important to remember that the process for conducting a freedom to operate (FTO) search is different from a novelty search. Let's say you have the idea of adding a laser pointer to a presentation remote control. If you do a patent novelty search and there really is no prior art in this direction, the report will be positive. However, in the case of an FTO search, you should consider whether there might be other patentable features in the product you are going to produce and market. For example, a receiver slot that allows the receiver of the remote control to be embedded in the body of the remote control after use. If this feature is patented by someone else, you may be infringing the patent.

A good prior art search can help you improve your invention. I've seen clients actually rethink and improve their inventions after a prior art search.

The patent landscape is complex, and navigating it can be challenging. Working with a qualified patent attorney is often a wise investment to help you assess the risks and make informed decisions regarding your intellectual property. Avoiding patent infringement and prior art issues is essential for businesses and individuals who want to protect their intellectual property and avoid costly legal disputes. To minimize the risk of patent infringement and prior art issues, conduct a Thorough Prior Art Search. Before developing a new product or process, conduct a comprehensive search to identify existing patents and publications related to your invention. This can help you determine whether your idea is truly novel.

In patent searches, the problem is not to get answers- on internet, you are flooded with answers! For example, in PATENTSCOPE there are 113 million patent documents. The challenge is to ask the right questions, and to analyze the results. We devised a new method, Patentics, to represent inventions in mathematical Boolean equations to be processed by computer. At present inventions are more complex, so it's more difficult to compare your patent with prior art- for example inventions in communications, software, crypto, artificial intelligence, robotics, etc. Here, again, Patentics may assist the patent attorney in comparing patents, to indicate the measure of closeness of patents, and to help devise a successful strategy.

At the R&D stage, it is most important to conduct a focused "State of the Art Search", which provides a lucid overview of the white spaces in the domain of interest. This search is more granular than a typical technology landscape, which provides a bird's eye view of the area and hence is able to provide more actionable insights as the outcome. This search can also provide opportunities and avenues for design around along with identifying spots where cross domain technologies can be amalgamated within the desired area for successful outcomes.

Using an innovative approach, you can improve on existing patents or patent applications, to get a patent. Often, good ideas are not pursued correctly in examination, and become abandoned. Such applications may be revived by inventor, or a new, enhanced application may be filed. But beware if designing around another's patent- you may still infringe on their patent. Being granted a patent doesn't grant you a license to use it. If you make a real contribution to improve on their patent, you may be able to reach a cross-licensing agreement, to benefit you both.

Your patent attorney can monitor the patents landscape, to detect threats to your business: After a patent application passes exam, it is published and anyone can object to a patent grant, for a limited time period. It is much easier to prevent a patent from being granted, than to cancel an existing patent. Even after grant, it is still possible to try to cancel the patent. It is most cost-effective to object to a patent grant; to cancel a patent on your initiative is more costly; and the most expensive is to try to cancel a patent, when you are sued in a court of law for its infringement- your very act of infringing may be considered proof of the value of the patent.

A patent is an interdisciplinary document, including both legal and a technical aspects. The patents examiner will consider both aspects of your patent application, during examination. You should consider employing a patent attorney also versed in the technical field of your invention. Of paramount importance are the technical words used to describe your invention. "Inventor is own lexicographer" is a relic from the past, before the internet, before information was available to all. I recommend using standard, accepted terms; even better, to define important terms. Thus you will be prepared for the scrutiny in infringement lawsuits- then you can't explain terms, the question is what the inventor intended while filing the application.

Education is definitely an important step. In business, it's important to realize that innovation without IP protection is charity/philanthropy. IP protection is necessary to capture the full value of innovation. Education massively helps improve organizational proactivity in protecting IP. In general, I've seen 3 groups of non-IP professionals: - 1) Generally well-informed (correct information level > 0) - 2) Uninformed (correct information ~ 0) - 3) Misinformed (correct information level < 0) Proper patent and IP education helps to move people from: - bucket (2) to bucket (1); - bucket (3) to buckets (1) and (2).

From practical point of view w.r.t. prior art issues, DO NOT let your R&D team do prior art search, esp. on any office computer, and explicitly ASK and TRAIN them to NOT to mention what they think as prior art infringement via any medium which can leave a record. What R&D people don't typically understand is that "patent is a legal document" and has to be handled by the legal professionals, it is not just another journal publication. What an R&D engg. may think is or is not infringement is most of the times incorrect. And this incorrect "opinion" can have serious repercussions during infringement litigation in case it happens and completely ruin the case. In USA, for willful infringement damages are 3x, so leave prior art search for legal.