IP Standard Operating Procedure - Respond to Potential Blocking Patent From Freedom-To-Operate Search

Introduction and Purpose:

Standard Operating Procedures (SOPs) are essential for a strong IP strategy. The following provides a general framework to enable a deep tech company to effectively respond with solutions to one or more potential blocking patents that have been revealed as a result of a freedom to operate search. You are encouraged to adapt this SOP framework to the unique circumstances of your company.

Procedure:

Arrange initial meeting to discuss response to potential freedom to operate issues:

• Upon receiving the opinion from the patent attorney confirming that an aspect of the company’s invention(s) likely infringes the blocking patent(s), send a secure email or other communication to all relevant stakeholders (e.g. CTO, legal counsel, and relevant technical experts) to arrange a high priority meeting to discuss and take next steps. Indicate the meeting could be at least 3 hours long.
• Unless secure email is used with the patent attorney CC’ed into the email, do not send the patentability opinion to the other stakeholders, because this may violate attorney-client privilege and negatively impact the company if there is future patent litigation over the blocking patent(s) in question.
• Unless secure email is used with the patent attorney CC’ed into the email, do not mention in the email that the company has a high risk of infringing a particular patent. Simply refer to the meeting as discussing “freedom to operate matters”.
• Confirm meeting(s) with stakeholders.
• Confirm that the patent attorney will be able to attend the meeting(s) virtually or in person in order to best maintain client-attorney privilege for the issues to be discussed.

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Initial meeting(s) to discuss potential freedom to operate issues:

• Remind each stakeholder of the importance of maintaining confidentiality of these discussions, because if the company is ever involved in patent litigation around the blocking patent(s), having “prior knowledge” that the company is infringing the blocking patent(s) without that knowledge being protected by attorney-client privilege could open the company up to higher damages.
• Do not start the discussion on the issue of the blocking patent(s) until the patent attorney is present.
• Ensure the discussion is recorded, or else someone is a designated note taker.
• Start the discussion on the issue of the blocking patent(s) by having the patent attorney summarise their opinion on how the company’s invention(s) infringe the blocking patent(s).
• Understand whether the blocking patent(s) is owned by an entity with a history of patent litigation or else an entity that likely has the resources to enforce their patents or has a large patent portfolio. If not, consider the risk of “doing nothing”, but continuing to monitor the patent.
• Understand whether the blocking patent(s) – if a patent application – has a strong likelihood of getting the current claims granted, or if it is more likely that the patent office will force a narrowing of the claims, and if so, what the risk is that the company’s invention(s) will still infringe the narrower claims.
• Clearly understand whether the relevant claims of the blocking patent(s) are drafted such that it is easy and inexpensive for the patent owner to prove infringement.
• Understand the likelihood of finding prior art to hold in reserve (or use in a preissuance opposition proceeding if dealing with a patent application) that shows the blocking patent(s) claims are not novel and unobvious.
• Understand the likelihood of being able to reach out to the owner of the blocking patent(s) and license the blocking patent(s) on favourable terms.
• Understand the difficulty of “designing around” the blocking patent(s) claims.

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Based on these discussions, document a plan of attack in order of priority and divide up tasks amongst stakeholders along with deadlines. Tasks to be divided up may include:

• Conducting an in-depth analysis of prior art references and exploring potential avenues for challenging the validity of the patent or patent application, if applicable, and document all findings and discussions regarding the prior art and patent strength evaluation.
• Determine if there is a possibility of acquiring a license or buying the blocking patent(s) from the patent holder to avoid potential infringement issues. Determine acceptable licensing terms, including financial considerations, exclusivity, and territorial restrictions.
• Evaluate potential design changes, workarounds, or alternate solutions that can minimise the risk of infringement while maintaining the core functionality of the company’s products or services.

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Establish secure documentation process:

• Post-meeting, establish a confidential and privileged communication channel and / or secure central repository for documentation among the core team to continue to facilitate open and candid discussions regarding the potential blocking patent. Configure appropriate access permissions.
• Send an email to all stakeholders explaining the use of the communication channel, the importance of documenting (and marking confidential) all the findings and actions they took to complete their tasks, and uploading this documentation to the communications channel or in the secure, central repository. When uploading documentation, ask stakeholders to follow the company’s file and document naming conventions.
• Upload notes from the meeting to this channel or in a secure, central repository following the company’s naming conventions.

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Follow-up and decide on a plan of action:

• No more than 30 days after the initial meeting and allocation of tasks, make a final decision on the best solution(s) to overcome freedom to operate issues.
• Store all documentation in the repository following the company’s file and document naming conventions.

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Disclaimer: this article is for education purposes only and should not be construed as legal or financial advice.