3. Patentability vs. Infringement

For transcript and show notes, visit: https://outlierpatentattorneys.com/patent-pending-made-simple/podcast/episodes/3

In this episode of Patent Pending Made Simple Podcast, Jamie and Samar discuss the differences between patentability opinions and patent infringement opinions. What is the difference, and when should you think about these concepts in your patent journey.

1. Introduction to the podcast (00:02)

   • Hosted by Samar Shah and Jamie Brophy

   • Catching Up (00:08-00:50)

2. Topic: Differences between patentability and patent infringement (00:51)

   • Initial discussion of the two concepts (01:13-02:41)

   • Just because you get a patent on something does not mean that you're not infringing on something, so you could still be infringing on somebody else's patent.

3. Is having a patent a good defense to infringement? ⁠4:02⁠

   • A client has a patent and they can still infringe on somebody else's patent, both of which can happen simultaneously.

   • Having a patent is not a good defense to patent infringement. Courts may not allow you to present that kind of evidence to a jury.

   • The different types of opinions that practitioners can draft: patentability, non-infringement, and freedom to operate.

   • Patentability opinions are straightforward, while infringement opinions are more complicated.

4. The importance of a patentability opinion. 7:57

   • Patentability analysis gives a good idea of whether a patent application will be rejected or not. It also gives an idea of what elements to focus on in the application to get a patent.

   • Litigation can cost upwards of $100,000 on the search itself.

   • The patentability opinion and the infringement opinions are very very different.

   • In infringement, you have to interpret the claim language and determine what is meant by each of those terms in the claims and that is kind of complicated.

5. The importance of non-infringement opinions. 12:09

   • When writing a non-infringement opinion letter, the quality of the opinion letter becomes very important, and the level of analysis that has been done is very important.

   • What to recommend to clients who want to know if they are infringing on something, and how to handle it.

   • Advice to those who want to do an initial search to see if they infringe someone else's patent before launching something.

6. Information disclosure statements ⁠16:50⁠

   Software patents are written often in a way that is indecipherable to clients. It is hard for the client to make a decision on whether the disclosure is relevant to their invention.

7. Information Disclosure Statements: The information disclosure statement is an ethical obligation to tell the patent office about references to the invention.

   • Cost considerations and ethical obligation to disclose relevant references (17:49-18:12)

   • Working with an attorney to establish search parameters and track references (19:01-19:23)

8. Conclusion and Closing Remarks (19:40)

   • Recap of key points discussed (19:49-19:57)

   • Disclaimer about legal advice and opinions expressed (20:27-20:44)

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