How to Invent and Protect Your Invention: A Guide to Patents for Scientists and Engineers

7.5 FREEDOM TO OPERATE

Before an inventor files for a patent, he will generally ask a patent attorney or agent to conduct a patentability search to determine if his invention meets the requirements of novelty, utility, and unobviousness needed to receive a patent. As we discussed above, an inventor can receive a patent even if a portion of his invention would infringe another person's patent if he tried to make, sell, or use his invention. He would still need authorization (a license) from the other patent owner to practice his own invention.

Freedom to operate looks beyond whether an invention can be patented. It looks at whether patent rights can be exercised without infringing on someone else's patent. Most companies that are looking to file for or license a patent conduct a freedom-to-operate survey, which looks at whether a potentially patentable invention can be made, sold, or used without infringing on the patents of others. Given the approximately 250,000 U.S. patents granted each year, there is a reasonable likelihood that a patent owner's right to make, use, or sell his invention is constrained by other patents. Parties commercializing inventions want to reduce the number of licenses they must negotiate in order to market a new product, so they would greatly prefer to license an invention that is not limited by too many patents.

Freedom to operate may be more important to companies than whether an invention is patentable. Thus, a prudent inventor should consider both ...