07/03/2016
It is a common misconception that if you can obtain a patent for your invention, then you are free to practise it. This is not necessarily the case. Whether or not you are free to practise your invention depends not on your own patent rights, but on the intellectual property rights of others.
A UK patent gives you the right to prevent others from making, disposing of (selling), offering to dispose of, using or importing the patented invention. A patent does not, however, give you the right to practise that invention.
There is therefore an important distinction between patentability and Freedom to Operate (FTO); even if you own a patent to your invention, practising your invention may fall within the scope of somebody else’s earlier rights.
How can i get a patent for my invention if somebody else already has a patent covering that invention?
This may well sound counterintuitive. How can ‘exclusive’ rights overlap? The reason for this is that patents cover inventions rather than products. While you may have invented and patented a specific feature of your product, a third party may have a patent covering a different specific feature of the product, or a patent that covers the product in more general terms.
In the UK and Europe, the main requirements for an invention to be patentable are that the invention is novel (new), and that it involves an inventive step, over everything that is known to the public on the filing date of the patent application.
This means that it is possible to invent a new and inventive feature for a known device, and to obtain a patent for that new and inventive feature. The invention is the new feature, but in many cases the product that you want to sell is the known device plus your new feature. If the known device is already protected by a third party’s earlier patent rights, however, then selling a product that is the ‘known-device-plus-your-new-feature’ could infringe the rights of the third party.
For example
By way of illustration, let’s assume that Mr Smith has obtained a patent for a chair. Thanks to the expertise of his patent attorney, Mr Smith’s patent was granted with a broad scope of protection that not only covers the exact chair that Mr Smith sells, but also a wide range of variants of that chair.
As a keen sitting-enthusiast, Mr Brown has tried Mr Smith’s patented chair, and has realised that it would be far more versatile if he attached wheels to the bottom of the chair legs.
Mr Brown is free to file a patent application in order to protect his new chair-on-wheels invention. Assuming that nobody, including Mr Smith, has ever put wheels on a chair before, then the invention would certainly be new, and is also likely to be considered inventive. The Patent Office therefore grants Mr Brown’s patent application for a chair-on-wheels.
Having carried out some product development work on his chair-on-wheels, Mr Brown decides that all of the existing features of Mr Smith’s chair (five legs, each formed from extruded aluminium alloy, mahogany frame, wicker seat, etc) are also highly desirable for his chair-on-wheels. The product that Mr Brown wants to sell therefore consists of his own (identical) replica version of Mr Smith’s chair, with a wheel attached to the bottom of each chair leg.
Mr Brown’s product is a chair on wheels, so it falls within the scope of his own patent, but his product also comprises all of the features of Mr Smith’s patented chair.
As Mr Brown’s product comprises all of the features claimed in Mr Smith’s earlier patent, selling this product will infringe Mr Smith’s rights. It doesn’t matter that Mr Brown has added the extra feature of wheels, as adding extra features to Mr Smith’s chair still falls within the scope of Mr Smith’s patent.
What’s more, the fact that Mr Brown has his own patent doesn’t make a difference. His patent entitles him to exclude others from practising his chair-on-wheels invention, but it doesn’t help him to avoid infringement of Mr Smith’s patent rights.
The result is that Mr Brown’s invention is patented, but due to Mr Smith’s prior rights, Mr Brown is not free to sell his desired product.
Faced with this situation, Mr Brown would be well advised to contact a patent attorney. A patent attorney will be able to advise on whether his product does indeed fall within the scope of Mr Smith’s patent, and on his options going forward. These options may include checking whether Mr Smith’s patent is valid, re-designing the chair-on-wheels product to fall outside the scope of Mr Smith’s patent, or taking out a licence in respect of Mr Smith’s patent.
In conclusion
For anybody looking to bring a product to market, it is important to understand the difference between having a patent, or a pending patent application, and being free to practise your invention.
Evaluating Freedom to Operate is not mandatory, and is a complicated and often expensive task which involves identifying relevant patents and analysing the scope of protection provided by those patents. Considering Freedom to Operate helps to reduce the risk of accidentally infringing third party rights, and giving proper attention to FTO can help to attract or reassure investors. However, FTO analyses may not be commercially appropriate for every business.
If you would like advice on Freedom to Operate, please contact us.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
