The simple answer to the question, “Do I need a Patent to commercialize my product or service?” is no. The more complicated question is “Does a patent (or license under another patent) give me the freedom to commercialize my product or service?” The answer is not necessarily!
Analysis of the apparent conflict in the above answers requires understanding the basic nature of a patent and how it can be enforced in the marketplace. Fundamentally, a patent is a contract between the United States and the inventor(s) wherein that:
- the U.S. grants inventor(s) the right to exclude others from making, using, selling, and importing the patented product/service/method in return for
- the inventor(s) providing an enabling written disclosure of the invention
From the perspective of the inventor(s) and stakeholders, it is critical that the written disclosure is sufficient for the U.S. Patent Office to grant a patent with its exclusionary rights. Accordingly, the inventor(s) and stakeholders should avail themselves of competent patent counsel to ensure a written disclosure is presented to the Patent Office which is sufficient to issue an enforceable U.S. Patent.
Once the Patent Office grants the Patent, a Patent Owner has the right to prevent others from making, using, selling or importing the patented technology in the United States.
However, the exclusionary right under the patent does not create a right for the Patent Owner to infringe the patent rights of another patent owner when commercializing the newly patented technology. Consequently, the Patent Owner can exclude others from making, using and/or selling its invention but cannot make, use or sell its own invention in the United States. This apparent anomaly occurs especially in a technology for which many patents have been issued, e.g., pharmaceutical and medical treatment technology, solid state electronics, etc.
Thus, when a patent (P1) is granted for a new chemical compound having beneficial bio-effecting properties, a later-issued patent (P2) for treating a specific pathology which include use of the new chemical compound of P1, the owner of P2 does not have the right to make, use or sell P2 free of liability from infringing P1. Consequently, the owner of P2 will be required to either buy or license the right from the owner of P1.
In the mechanical patent world, think of a first patent (P1) being granted for a chair having:
- a seat
- four legs supporting the seat
- a back extending upward from the seat
A second patent (P2) being granted for putting rockers on the legs of a chair resulting in a rocking chair. Since rocking chairs also have a seat, four legs, and a back, the owner of P2 would infringe P1 if P2 would commercialize in the United States.
How does one navigate these treacherous patent waters? By engaging competent patent attorney for incisive and forward-looking patent advice. The trick is to be able to obtain meaningful patent protection while avoiding potential liability for infringement in the relevant marketplace.
Originally Published 18 March 2022
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.