If you know the enemy and know yourself you need not fear the results of a hundred battles – Sun Tzu
When you buy a property or a car, you usually invest the time and effort to verify the ownership prior to closing the transaction. However, some companies invest large sums of money to develop a new product without determining whether the underlying technology already exists and is owned by someone else.
There is a school of thought, based on old case law, that searching patent databases can lead to willful infringement liability. Therefore some companies avoid performing any research on these databases. However, recent case law (MIT vs Seagate) requires that the accuser shows definite proof that the defendant has willfully infringed their patent, not merely innuendo based on the active searching of patent databases.
Furthermore, the USA Patent Reform Act (2007), which is at its final approval stages in the Congress, will require that the accuser formally notifies an infringer and gives the company time to respond. Only if the infringer continues to practice the invention and is found to actually infringe the patent for which it was notified, can it be held liable for willful infringement.
There is a wealth of information in patent databases that can be used to understand new technologies and solutions, competitive positioning and industry trends. More importantly, searching patent databases can prevent incurring costly patent filing expenses, can significantly improve the chance of obtaining a valid issued patent and will reduce the cost of the examination process.
So, when it comes to your intellectual property, it is good to know!
I will cover some other good reasons to search patent databases in a future post . . .