June 11, 2012

TEXAS LAWYER
HOW TO MINIMIZE PATENT INFRINGEMENT EXPOSURE
available pending applications) can also be conducted under the patent attorneys supervision, particularly directed to principal competitors those not typically inclined to forgive or license infringed patents. A careful study of these documents by you and then by a patent attorney can provide the company with information to avoid infringement and gain intelligence about competitors developments. 2. Contact a patent attorney to perform a search and render an opinion early in the design process. Many companies fail to contact patent counsel until the nal stage of product design, or even worse, until a legal problem arises. This forfeits many advantages of an early patent search, which can identify problematic patents before substantial capital expenditures. If the search reveals any patents that should be avoided, implementing design alternatives can occur before 1. extensive engineering and testing is conducted, 2. raw materials are purchased and 3. an extensive inventory of infringing products is accumulated. A patent attorney will assist you in designing around these types of patents before the product goes to market. In many cases, patent searches also reveal that the technology is in the public domain or that a prior unsuccessful attempt was made topatent it. In either case, knowing this information can substantially reduce legal and design costs. 3. Consult regularly with the patent attorney. After completing the patent search (and opinion), remember to keep the patent attorney advised

by MICHAEL W. DUBNER Defending a patent infringement suit can be nancially devastating to any company. Each year, thousands are led, oftentimes costing defendants millions of dollars in liability and attorneys fees. In many instances, had these defendants conducted a simple patent investigation prior to commercializing their technology, liability could have been avoided. Unfortunately, failure to obtain patent counsel is common. That technology cant be patented, our competitors dont have patents, we patent every product so we dont need to worry, we have never been sued before, or its too expensive are a few common excuses. This mind-set can lead to unbudgeted engineering costs associated with developing non-infringing redesigns, leave a company with millions of dollars of useless inventory and destroy longtime relationships with customers sued for innocently purchasing infringing products. Below are six ways companies can minimize patent infringement risks. 1. Identify and understand the competition. Identifying competitors and their patent portfolios is imperative and requires minimal cost and resources. Look at competitor products, product packaging and accompanying manuals for patent numbers. Then, identify the patents for review through the U.S. Patent and Trademark Ofce (USPTO). A more comprehensive search of patents and published patent applications (i.e., publicly

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of any design modications. It is critical that the patent attorney evaluate the nal design before introducing the product into the market. The slightest change can negate initial conclusions that a product is free of infringement. Include the patent attorney in scheduled design meetings to monitor the development of the technology. 4. Monitor newly published patent applications and issued patents. As a general rule, patent applications are maintained in secrecy in the USPTO for 18 months after ling, and in some instances, until the patent is issued. As such, when a patent search is conducted, there may be relevant patent applications that cannot be evaluated. Thus, it is important to continue monitoring newly published applications and issued patentsto identify unforeseen infringement situations. At a minimum, track direct competitors by periodically monitoring USPTO databases. 5. Develop a patent portfolio. Avoid the this isnt patentable mind-set. Even minor improvements can be patentable. As a general rule, if the particular feature is important enough to be included in the nal design, give serious consideration to whether it warrants patent protection. Oftentimes, employees form the opinion that because the design is simple, it is not patentable; however, even simple designs are eligible for patent protection. In the end, growing a patent portfolio can prevent others from patenting the same or similar technology and give the company trading leverage in the event of threatened litigation. 6. Educate employees. Many companies fail to educate their employees about patents. In addition to understanding when it is necessary to protect new company technology, it is equally important to understand situations that could

June 11, 2012

give rise to patent infringement. Knowing when to seek patent advice can be crucial to effectively and economically avoid infringement. Early and effective patent investigations, including those as simple as the steps outlined above, can minimize unnecessary capital expenditures and risks. Companies will nd that legal expenses incurred due to preventive measures are only a fraction of typical costs for defending a patent infringement suit.


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