You’ve decided to launch a product based on one that is already on the market. You investigate the existing product and find that it’s already been patented but the patent has expired.
What should you do now?
The big question is:
Can you make and sell the same product covered by an abandoned or expired patent?
The simple answer is YES. When a patent expires or is abandoned, you (i.e., the public) are allowed to make and use the invention described in the patent. The patent owner’s invention has been dedicated to the public. It’s free for all to use.
However, that’s not the end of the analysis. The more complex answer is MAYBE. You don’t know if you’ve found all of the patents protecting that patent. If there is one unexpired patent, you are open to liability. You need to find all patents that protect the product you are copying.
How to find ALL of the patents for the patented product?
In our hypothetical above, you found one expired patent but you really don’t know if you’ve found ALL of the patents including the unexpired ones that protect that product. The patent owner may have other unexpired patents covering the product. If the patent owner has one unexpired patent covering the product, you need to find it. Otherwise, you would be liable for patent infringement of that unexpired patent.
Let’s discuss this in a bit more detail.
Most likely, you purchased the product you are trying to knock off and looked at the product itself to find the patent number. The patent owner marked the product with the patent number. This is referred to as patent marking. Or, you searched the product’s webpage and found the patent number. The patent wasn’t expired when it was initially put on the product or the webpage. But, over time, the patent has become expired. Great. You found one patent for the product and fortunately for you, it expired.
However, in some cases, the patent owner may have more patents that were not marked on the product and not listed on the product’s webpage. It’s your responsibility to make sure that you’ve identified all of the patents owned by the manufacturer. Once you identify all of the patents, you need to make sure that all of the patents have expired or that you’ve designed around them to avoid patent infringement.
Otherwise, you may be liable for patent infringement of the other unexpired patents even though you avoid liability for the expired patent.
If you’re asking yourself why doesn’t the patent owner list all of the patents on the product, you need to understand that patent marking is not a requirement. The patent owner has the option to label the product with the patent number or not. They get more benefits if they do follow the patent marking statute but it isn’t required.
For example, method patents don’t need to be marked on the product. Also, the patent owner may have secured additional patents after making the mold for the product and never updated the mold due to costs.
You need to find all of the patents that protect the product if you want to be sure to avoid patent infringement liability.
How to find other patents owned by the patent owner for a product?
Right now, we’re focused on patents owned by the manufacturer of the product. Later, we’ll focus on patents owned by other companies or people.
To find all of the patents for a product owned by the manufacturer, you need to conduct a broad-based search for the company name or inventors (e.g., assignee search) associated with the expired patent.
To conduct the broad-based search, go to www.freepatentsonline.com and insert the name of the company or the inventors. Look through the search results and find any other patents that are related to the product. It’s a manual process to review the list of patents but must be done if you’re concerned about patent infringement.
You should be concerned about patent infringement especially if you are trying to copy another’s product. It’s one of the things you must do if you are knocking off another’s product. If you want to learn how to look for patents of a product, you can read my resource: How to check if a product’s already patented?
How to find other patents owned by others that cover your product?
Till now, we’ve been concerned about patents owned by the manufacturer of the product you’re trying to copy. However, you could be liable for patent infringement of patents owned by other people. This isn’t as big of a concern compared to the situation we’ve been discussing but it could be a concern if you are making a huge investment. You want to be sure that you aren’t infringing on another’s patent before you make the investment. To mitigate this risk, you need to conduct a freedom-to-operate search.
A freedom-to-operate search is a broader-based search than the one that we conducted above. A freedom-to-operate search would be commissioned to look for patents that claim the unique features of your product. Freedom to operate searches is much more complex compared to a simple novelty search, or the assignee search or inventor search we conducted above.