What is a Patent Clearance Study?

The purpose of Patent Clearance Studies is to evaluate the risk of a particular product infringing the patent of a third party. Patent Clearance Searches are often performed prior to significant investment in a particular product, such as in the very beginning to avoid developing a product or process on which a third party holds valid patent rights. It is very much recommended to have another Patent Clearance Study before product launch to avoid to be forced to take a product off the market just after sales have started. It is usually less damaging to the financial outcome and the reputation of a company to redesign a product and re-launch it with a delay then to pay damages and envisage the negative reputation.

Scope of a Patent Clearance Study

A Patent Clearance Study starts with defining the scope of the Patent Clearance Study. You will easily appreciate that it is relatively easy to find third party IPR (intellectual property rights) that relate to a clearly limited technical field, such as an electric torch.  However, if your product is of complex nature with different independent, or interacting technical features, a Patent Clearance Search has to be limited due to the usually limited resources of the client. For example in the event you have developed a new model of a combustion engine, you may decide to restrict the Patent Clearance Study to only those technical features which you have changed in comparison to the former model.

Patent Search

The Patent Search is done on issued patents or on pending patent applications in a professional data base from a patent data base provider. Free available patent data bases are sufficient to get a first overview, but their rather primitive user interface does not allow comprehensive searches, nor is there a guarantee for completeness. The risk to miss an essential patent or patent application is too high. The retrieved patent documents then have to be scrutinized to determine if a product or process under study infringes any of the claims of the issued patents or pending patent applications.

Patent Clearance Opinion

In the next phase of the Patent Clearance Study, if relevant patent documents have been identified, the validity of the retrieved patents or patent applications has to be examined resulting in a clearance opinion. Invalid patents, e.g. patents which have not been maintained and have lapsed, or patent application where a possibly issued search reports clearly shows that the patent application has no chance to be granted, do not have to be respected. If one or more valid patents remain after the clearance opinion a decision has to be made, either to abandon the project, designing around the valid patent or to ask the patent owner to grant you a license.