How to deal with your competitor’s patents

If you discover that a patent already exists over an invention that is crucial for the success of your business, all is not lost – you may still be able to use the invention.

Regardless of the patent’s stage of life – from newly granted, through to near expiry – there are options suitable for any budget to gain access to, and use of, an invention that could benefit your business.

We’ve outlined some top tips below:

Keep the portfolio under careful observation

Patents have a limited protection period which must be renewed at regular intervals in order to maintain the protection that they provide. A patent holder may miss a renewal deadline or allow the patent to lapse. If this happens, the invention which it covered becomes free to use – providing the patent is not restored.

Patents are also national rights. The existence of a patent in one jurisdiction doesn’t prevent you using the invention in another jurisdiction. An IP lawyer can help you search and monitor public registers and interpret the results.

Approach the holder for a licence agreement or assignment

If an invention is important to your business, you may want to approach the patent holder to see if they will allow you to use the invention in return for a fee – this is known as a licence agreement. These agreements are common and provide a regular income stream for the patent holder, so it may be in the holder’s interest to allow your business to use the patented invention.

Alternatively, a patent holder may no longer need the patent, and it may therefore be possible to buy the patent from them, transferring their right, title, and interest in the patent to you – this is known as an assignment. By purchasing the patent, you then have the choice to exploit the period of exclusivity that a patent provides to establish your product or licence the patent to others to generate a regular income.

However, approaching the patent holder will obviously highlight your use (or intended use) of the invention and could give rise to the risk of patent infringement proceedings. In some situations, it may be better to keep quiet and see if they notice what you’re doing, especially if it’s difficult for the patent holder to detect that you are using their technology.

Get confirmation that you don’t infringe the patent

If your technology is close to the patent but different enough that you don’t think it falls within the scope of the patent claims, you could consider going through a procedure to establish that it doesn’t infringe. This could range from providing the patentee with details of your technology and asking them to confirm it doesn’t infringe to start a court case asking the court to make this finding. An IP lawyer can guide you through the options and their relative merits.

Opposing the grant of a European patent (within 9 months of its grant)

You may be able to oppose a European patent being granted if the patent has been granted for less than 9 months. If successful, the patent will be revoked or maintained in amended form in all countries that have signed up to the European Patent Convention.

If you are looking to distribute and sell your product throughout Europe this could be beneficial to you. The process is generally cheaper than later applying to revoke the patent (which needs to be done separately in each country). However, being unsuccessful in the opposition process can make it easier for the patentee to enforce their patent against you in some European jurisdictions.

Apply to have the patent revoked

In the UK, a patent is presumed to be valid until the contrary is shown. By questioning the validity of the patent, you may be able to have the patent revoked, meaning the invention it covered becomes free to use. This could open up a technical field for you to operate in that you previously thought was closed off, although you will need to revoke the patent in every jurisdiction in which you want to use it.

Although this could be incredibly beneficial to your business, it can also be very costly. There are only a few grounds that can be relied upon for the revocation of a patent and meeting the evidentiary requirements to establish these grounds can be difficult. If you are considering this option, you should seek legal advice in order to achieve the best outcome for your business in the most cost-effective way possible.