Based on our investigation into the recent court and IP Australia decisions on patentability of four Aristocrat software innovation patents, we present three actionable steps in this article for patent attorneys and innovators to reduce subject matter objection risk for software patents from the outset. This article also gives an example of a certified software innovation patent without the subject matter objection raised during certification.
Freedom-to-operate patent search
Why carry out a freedom-to-operate patent search
If you are looking to develop or release a new product, it is important to ascertain whether it would be open to a claim for infringement of intellectual property rights of a third party, for example, third-party patent rights. If the answer to this question is “no”, then you are said to have “freedom-to-operate”. A freedom-to-operate patent search is also known as a “patent clearance search” or a “patent infringement search”.
A freedom-to-operate patent search addresses the risk associated with being blocked from market by a third party in terms of:
- development costs
- reputational damage
- withdrawal of products or services from the market
- legal costs
Our clients who operate in crowded markets routinely have us carry out patent clearance searches. The first step in an Australian freedom-to-operate patent search is to identify granted Australian patents or patent applications (which would upon grant) that are live and that pose an infringement risk. Your product or proposed product is then analysed against the claims of the patents that have been identified by the patent clearance search.
How to achieve freedom-to-operate
When a third-party files a portfolio of patent applications, they generally will only file in a small selection of countries. For example, a patent applicant may only file a patent application in the United States and Europe – and not in Australia, in which case you can make and sell their patented invention in Australia and in every country other than the United States and Europe. The third-party patent application may have also been “knocked back” or limited during examination in some countries, and you may therefore still have freedom-to-operate in those countries.
What to do if you don’t have freedom-to-operate
If you had a freedom-to-operate patent search carried out and discovered that you would infringe an existing patent if you were to proceed with your product, it’s not the end of the road. There are at least 4 paths you can go down:
- You can attempt to invalidate the patent by locating prior art. Sometimes, patent examiners miss important items of prior art that either alone, or in combination with other prior art documents, would invalidate or limit the claims of the granted patent. Furthermore, patent examiners will normally only look at patents and scientific publications and not more broadly at the prior art base, such as on commercial websites, forums or blogs. Patent examiners also easily miss prior art documents that are not in English – for example, those on the Russian Patent Office Database.
- You can attempt to obtain a license for the technology from the patent owner. You will most likely be successful in obtaining a license where the patent owners themselves have not commercialised a product in accordance with the patent.
- Where you are the owner of a patent application that is of interest to the patent owner of the third-party patent, there is also the possibility of cross-licensing the two patent applications. This has become quite a popular solution employed by large companies to avoid patent litigation, but this approach is useful for all companies.
- You can attempt to design around the patent, that is, to ensure that your product design does not encompass all of the features of one of the claims of the third-party patent. Your patent attorney can help you with designing around an existing patent.
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