Risk is an ever-present factor in business ventures, and businesses take various steps to mitigate risks and avoid surprises. Such surprises can be costly when dealing with patent infringement accusations that surface following the launch of a product.

Once such accusations arise, even if the volume of accused products is low so that the number of potential damages would make litigation unlikely, negotiating a settlement to remove the barrier to entry posed by the patent may still cost tens of thousands of dollars.

Such accusations can also affect the relationship between the business and its retail partners (e.g., big-box retailers), who may stop selling the product until the accusation is resolved.

Taking steps to search for and identify such risks before launching a product can help avoid such surprises and costs, for example, by allowing the business to make design changes that to avoid a patent.

Patents are legal instruments that grant the patent owner the right to exclude others from making, using, selling, offering for sale, or importing an unauthorized product that falls under the patent scope. Businesses often consider whether their new product can be protected with a patent or not. However, a common misconception is that having a patent means making and selling the product is covered by the patent. It does not. As noted above, patents grant the right to exclude competition for a limited period of time. Even if one successfully obtains a patent for an invention, it does not mean there may not be other previously granted patents with a broader scope that would cover the proposed product and pose a potential barrier to its entry into the marketplace.

Therefore, an important evaluation when planning the launch of a new product is whether there may exist issued patents with claims whose scope may cover the product to be commercialized, which may pose a barrier to marketplace entry for the product. Importantly, businesses should consider such potential barriers to entry posed by existing patents even if it may not be possible to secure patent protection for their own proposed new product. Such an evaluation of third-party patent risks is useful whether the new product is a complex device, such as an electronic device (e.g., wireless speaker, smartphone), or a simple device with no moving parts or electronics (e.g., an automobile aftermarket part, such as a wheel or car mat), and whether or not similar products are already in the marketplace.

One possible source of such third-party patents may be competitors that the business is aware of for similar products. For example, if competitors already sell similar products, one can check whether their product or product packaging has a patent marking (i.e., identifies that a patent covers the product). Publicly available patent search engines (e.g., Google Patents) can also help identify potentially relevant patents, such as when searching for patents a particular competitor may have.

However, identifying potentially relevant third-party patents requires conducting a carefully planned search of patents directed to features of the proposed product. Because such searches can be complicated, businesses should consult a patent attorney for help in such evaluations.