IEEE Spectrum June, 2008 - 16

invention
The PiTfalls
of PaTenT
searches

Knowing about
patents can
sometimes be worse
than not knowing

Y

stephen savaGe

ou can learn a lot by
searching patents, but
what you learn can
sometimes be dangerous. If
a court should ever find that
you infringed on a patent
knowingly, you might have
to pay triple the damages,
together with attorney fees.
You can protect yourself
by obtaining a lawyer's
written opinion stating either
that there is no infringement
or that the patent in question
is invalid. However, such
an opinion can cost tens of
thousands of dollars. So if
you search patents regularly,
getting an opinion for each

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www.spectrum.ieee.org

patent you know about is
just not practical. And what
does it really mean to know
about a given patent?
At one extreme on the
knowledge continuum is
the large, evil corporation
that has studied a smaller

competitor's patent and then
ignored it, deciding, say, to
outspend the competitor
in court if sued for patent
infringement. At the other
extreme is the company
accused of knowing about
a patent simply because
one of its engineers has
stored a copy of it in his
files, unbeknownst to
bosses and colleagues. In
between these two extremes
lie the hard cases.
It's perfectly legal to
study existing patents in
order to know how to design
around one of them. But
what if a jury decides that
you haven't really sidestepped a patent? You can
use that design-around
attempt as evidence that
your infringement was
not willful. Unfortunately,
an unsuccessful designaround attempt does not
automatically produce a
finding of no willful intent.
It used to be that you had
a duty to obtain an opinion

from a patent attorney
once you knew about a
given patent. Then in 2004,
the United States Court
of Appeals for the Federal
Circuit in Washington,
D.C., ruled that an opinion
of counsel was no longer
required. Better yet, the
court recently handed
down a decision that makes
"objective recklessness" the
new standard for willful
infringement instead
of mere negligence.
Here are a few tips:
* Focus your search. If you
are interested in analog-todigital (A/D) converters,
don't print out and file away
the thousands of patents
with "A/D converter" in
the title or in the abstract.
* Become patent savvy. Learn
how to read patents, how to
tell if one has expired, and
how to zero in on the patent's
claims. Understand, too, that
even expired patents you
know about must be cited to
the patent office when you
apply for your own patent.
* If you know about a
patent, tell your patent
attorney what you've
learned and its source.
* Follow your company's
policies. That way, if the
company gets in trouble,
at least it shouldn't be
counted against you.
* Finally, weigh in with your
representatives in Congress.
Many bills have been introduced to limit a finding of
willful patent infringement
to cases in which a company
receives notice of the patent
from the patent owner. So far,
none of the bills has made it
into law.
-Kirk Teska

june 2008 * Ieee Spectrum * nA

29
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Table of Contents for the Digital Edition of IEEE Spectrum June, 2008
