Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 129

Since others normally have obtained patents in the field related to your invention, a freedom‐to‐use search should be conducted upon completion of the development of the product or process embodying your invention, which asks the question “Will my new invention, as embodied in a marketable product or process, infringe another unexpired patent of which we are currently unaware?” By way of a hypothetical example, suppose your new invention relates to a pencil having an eraser on one end. It would be important to find out whether anyone holds a patent on a pencil alone, because the manufacture and sale of your pencil plus eraser will infringe the earlier patent owner’s right to exclusively make, use or sell pencils. Thus, the purpose of a freedom‐to‐use search is to uncover prior active unexpired patents to determine whether your invention, or any subset of your invention, would be covered by claims of another unexpired patent.

In conducting a freedom‐to‐use search, each claim of the unexpired patents uncovered by the search must be examined to determine whether your invention may be covered by any of these claims. If only a single claim in a patent reads on your product or process, that patent is infringed. If it is found that there is a possibility of an infringement issue arising upon the marketing of your new product or process, a right‐to‐use search may be appropriate (see Section 8.3.3). Alternatively, it may be possible to create a modification of your invention or device which “designs around” the patent claims that potentially cause infringement problems. In so doing, you are attempting to avoid infringement.