As we just learned, the right to exclude can be a very valuable right; implicit in the right to exclude is the right to not exclude. Where one party has the right to exclude others from making, using, or selling a claimed invention that others covet,then the party holding the right has something of value. Very often, this value can be equated to some cash value by which the party holding the patent rents or sells that intellectual property space to others. Alternatively, the party holding the intellectual property space may want to occupy it himself. However, whether the owner of the patent decides to rent that space to another party or attempts to occupy it himself,neither the other party nor he is guaranteed by the patent right he holds to be allowed to make, use, or sell the invention that he claims since the right of the patent holder is to exclude others from the claimed patent space—the patent holder cannot grant anything or license anything to another party that he does not hold himself. You may find it odd that a person could invent something, be awarded a patent but yet not be able to practice what is described in the patent, but yet still grant the right sunder that patent to somebody else who himself may or may not have the right to practice what is claimed in the patent he has taken the rights to from the first person.
The primary reason for this dichotomy is that the criteria for obtaining a patent are not the same criteria for determining whether the patent obtained can be used. In other words, the USPTO is not concerned with whether you can legally practice your claimed invention; they are solely concerned with whether your claimed invention meets the requirements of patent ability. This does not mean that you, the patentee do not have to be worried about whether you can practice the invention claimed in your patent; it all depends what your goals are. Do you wish to practice your invention,license it to another, or simply brag to your friends about it (or even all three)? If you wish to practice the invention described by your granted claims, you will want to be sure that you are not infringing somebody else’s patent(s) in the process. The primary inquiry then is whether you have “freedom to operate” the claimed invention.If practicing your invention infringes another’s patent(s), then you need to consider whether you can find a way to practice your invention that avoids his patent, or consider approaching him to see if you can license his patent(s), or perhaps you are confident that his patent is not valid and that if he tries to assert it, you can get his patent invalidated in a federal court.
In this sense, having freedom to operate is like having a shield that defends one from charges of infringement, whereas a patent acts like a sword, allowing its holder to go on the offense by excluding others from the claimed space of his own patent. Winsome cases, a chemist may want freedom to operate only as he may simply wish to make, use, or sell a certain composition or process. He does not care to try to exclude others but simply wishes to do something without being bothered by the possibility of an infringement suit by another. In other cases, the chemist may obtain a patent toga composition or process that he is not himself interested in making, using, or selling because he knows the invention would be valuable to others who do not want to be excluded from the claimed invention. Finally, the chemist may wish to make, use,or sell the product of his invention, and he may also wish to own a patent to that invention so that he may prevent others from making, selling, or using his invention so he has the sole or exclusive right to do what he wishes to do. In some cases one needs a shield, in some cases one needs a sword, and in some cases one needs both.Not all three choices are available in all circumstances, but understanding one’s needs is a necessary first step for staging the inquiry that follows.
Knowing whether and to what extent one has freedom to operate in the realm of patents is usually more complicated then understanding one’s rights regarding other types of property. For example, in real property, the rights and restrictions that run with the property usually can be figured out in a relatively straightforward manner by a title search. When a title search is performed, the chain of title is searched back in time to make sure that clear title can in fact be passed by ensuring that each party in the chain of title had conveyed the title in a legally competent manner. In the same manner, that title search should turn up any restrictions that run with the property so that the new owner can be sure he is getting the rights to the land he thinks he is getting. If somebody besides yourself has mineral rights to your land, you might wish to know that before you buy the property lest you be unpleasantly surprised one bright shiny morning when the mining crew shows up in your front yard to begin the excavation. Likewise, before a party wishes to prosecute, license, or even purchase apatent, that party likely will want to know whether the patent he covets is sufficient for him to practice the claimed invention.
In contrast to a piece of real property and its attendant deed, a freedom-to-operate search for intellectual property generally involves a much more multivariate inquiry.The practice of any given technology often requires a large number of steps, any of which may involve processes or materials that may be the subject of different patent claims held by other parties. Holding a patent, unlike the property deed, will not give one notice of whether practicing the claimed invention will infringe another’s patent—such an inquiry must be independently conducted by searching databases that catalog patent claims by various search descriptors (e.g., chemical structure, compound name, keyword).
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