Patent Services – Right to Practice

Assessment Of Whether One Can Practice One’s Invention Without Infringing Another Patent

For an assessment of whether one can practice one’s invention (i.e., make, sell or use the product, service or method of operation that is one’s invention) in the U.S. without infringing someone else’s U.S. patent, there are a few options to choose from, depending upon: (1) whether one’s concern is about possibly infringing: (a) a specific patent or (b) all of the possibly relevant patents in the industry that the inventor will be operating, and (2) the level of non-infringement comfort that one is seeking.  The more patents which have to be assessed and the greater the desired level of confidence that one wants in such assessments, the greater will be the cost for this service.

Option 1:  Quick Look Review/Patent

  • Review the client-identified patent about which there is an infringement concern so that its claims can be sufficiently understood to allow the attorney to assess whether any of them “read on” the client’s invention (as a cost cutting steep, the patent’s file history is not studied, and we assume that the patent is valid and its claims can be broadly interpreted for the purposes of this quick look review);
  • Review the client’s invention in sufficient detail so that an understanding of it is achieved which will allow the patent attorney to proceed with the necessary analysis;
  • Telephone call with the client to discuss his invention and the basis of his patent infringement concerns for this client-identified patent;
  • Telephone call or meeting with the client to provide an oral report of this assessment;
  • This review usually takes less than a day, and is usually quoted in the $2,000 range of legal fees but can quickly increase to much more depending on the complexity of the client’s invention and the number of claims that have to be assessed in the client-identified patent.

Option 2: Intermediate Review/Patent

  • The review incorporates the above points, plus:
  • Brief review of the patent’s file history to determine how it might impact the interpretation that a court is likely to give patent’s claims;
  • Delivery of a preliminary, written, non-opinion report with a summary of issues and claims considered
  • This intermediate level of review generally adds another $2,000 – $3,000 in legal fees depending on the complexity and size of the patent’s file history (50p – 1,000p and which usually depends on how many pieces of prior art were cited against the application from which the patent issued and whether the application claimed priority to any prior patent filings) and as to whether more information might need to be provided by the client to clarify the nature of the invention.

Option 3:  Full Service Review/Patent

  • This review incorporates the above points, plus:
  • Brief further review of the patent’s file history to make a preliminary assessment of whether this patent can withstand a patent infringement defendant’s challenge to its validity and enforceability;
  • Full, Written Report documenting the assessment;
  • This full service level of review will generally add another $4,000 or more of legal fees depending on the complexity of the task involved in fully documenting and explaining the various parts of the assessment and the total amount of information that the client eventually provides regarding the invention (i.e., new product, service or method of operation) that the client wishes to introduce into the marketplace.  Please note, any searching services in the above options will be limited to the file history, etc. of the client-identified patent.  Searching for more information on this matter is outside the scope of the above-quoted services.

Required Additional Patent Search Services:

If the client’s concerns are broader than one specific patent and extent to all of the possibly relevant patents in the industry or marketplace in which the client will be introducing their invention (i.e., new product, service or method of operation), additional patent searching will be necessary in order to identify such possibly relevant patents.

The cost of such patent searching services will often be in the range of $2,000 – $3,000 or more and dependent on the number of patents or pending patent applications that are applicable to the industry or marketplace and possibly relevant to the client’s invention (i.e., new product, service or method of operation).

Freedom-To-Operate (FTO) Assessments (Requiring the above identified additional patent search services):

From the above listed costs, it can be inferred that such assessments can be quite expensive.  For example, if the additional patent search were to identify five possibly applicable patents, such a FTO assessment, even at the “quick-look” level, could easily cost in the range of $10,000 or more (note: this number is less than $12,000 because there is some efficiency in the process {i.e., it usually doesn’t take as much time to analyze the 5th applicable patent as it did the 1st patent because the patent attorney will have come to know the applicable technology much better by the time he/she begins analyzing the 5th patent}).

For such a 5-patent, FTO assessment at the “full service” level, a client could realistically expect their costs to be in the range of $30,000 – $40,000 or more.