• 28
  • OCT
  • 2019

It’s a common misconception: having a patent gives you the right to use your invention. IP expert Kathy Lumsden of patent attorneys Sweetinburgh & Windsor explains why this isn’t always the case.

So, I have a patent. That means I can use my invention without worrying, right?

Afraid not.  It all comes down to two terms: ‘Patentability’ versus ‘Freedom-to-operate’.

Patentability relates to whether you can achieve a granted patent for your invention.  Freedom-to-operate relates to whether you are able to carry out your invention without infringing a third-party patent.

Some inventors find it surprising that obtaining a granted patent does not give them freedom-to-operate.  There is a difference between whether an invention may be patentable and whether you have the freedom-to-operate to carry out your invention.

This means that there are two separate considerations regarding your innovation:

Are you likely to achieve a granted patent for your invention?

Are you likely to have freedom-to-operate?

It is important to consider both of these questions and not to assume that because you have a patent, you will also have freedom-to-operate.

What rights do patents offer me then?

A patent is a negative right, that is, it allows you to take action against a third party who is carrying out an act that would infringe the claims of a granted patent in a given jurisdiction.  A granted patent does not give you the right to carry out your invention in a given jurisdiction. 

You may have a granted patent in a given jurisdiction, but you may not have freedom-to-operate, because someone else has a granted patent in that jurisdiction that you would infringe. 

It is possible and common, for a first patent to be granted to a broad concept, and then a second, later patent to be granted to a narrower concept which falls within the scope of the broad concept.

For example, a first patent could be granted to new class of chemical pest attractants, and then a second patent could be granted to a new pest attractant within that class as there is data to show it has a technical advantage

How do you get Freedom-to-operate?

When launching any new product or using a new process, it is important to conduct searches to see if there are any Intellectual Property rights that could be infringed.

If Intellectual Property is identified as a problem for freedom-to-operate, then there are two main options. The first is to look for evidence that the Intellectual Property is not valid and so would not be enforceable. The second is to seek a licence from the owner of the Intellectual Property.

Patent Attorney Kathy Lumsden is a Partner at Sweetinburgh & Windsor