The Pitfalls of Patent Searches

Knowing about patents can sometimes be worse than not knowing

Illustration: Stephen Savage

You can learn a lot by searching patents, but what you learn can sometimes be dangerous. If a court should ever find that you infringed on a patent knowingly, you might have to pay triple the damages, together with attorney fees.

You can protect ­yourself by obtaining a lawyer’s ­written opinion stating either that there is no ­infringement or that the patent in ­question is invalid. However, such an opinion can cost tens of thousands of dollars. So if you search patents ­regularly, getting an opinion for each patent you know about is just not practical. And what does it really mean to know about a given patent?

At one extreme on the knowledge ­continuum is the large, evil ­corporation that has studied a smaller ­competitor’s patent and then ignored it, ­deciding, say, to outspend the ­competitor in court if sued for ­patent infringement. At the other extreme is the ­company accused of ­knowing about a patent simply because one of its engineers has stored a copy of it in his files, unbeknownst to bosses and colleagues. In between these two extremes lie the hard cases.

It’s perfectly legal to study existing patents in order to know how to design around one of them. But what if a jury decides that you haven’t really sidestepped a ­patent? You can use that design-around attempt as evidence that your infringement was not willful. Unfortunately, an unsuccessful design-around attempt does not ­automatically produce a finding of no willful intent.

It used to be that you had a duty to obtain an ­opinion from a patent ­attorney once you knew about a given ­patent. Then in 2004, the United States Court of Appeals for the Federal Circuit in Washington, D.C., ruled that an ­opinion of ­counsel was no ­longer required. Better yet, the court recently handed down a ­decision that makes ”objective ­recklessness” the new ­standard for ­willful infringement instead of mere negligence.

Here are a few tips:

Focus your search. If you are interested in ­analog-to-digital (A/D) ­converters, don’t print out and file away the thousands of patents with ”A/D converter” in the title or in the abstract.

Become patent savvy. Learn how to read patents, how to tell if one has expired, and how to zero in on the patent’s claims. Understand, too, that even expired patents you know about must be cited to the patent office when you apply for your own patent.

If you know about a patent, tell your ­patent attorney what you’ve learned and its source.

Follow your ­company’s policies. That way, if the company gets in ­trouble, at least it shouldn’t be counted against you.

Finally, weigh in with your representatives in Congress. Many bills have been introduced to limit a finding of willful patent infringement to cases in which a company receives notice of the patent from the patent owner. So far, none of the bills has made it into law.

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