Can I Still Manufacture a Product If My Competitor Has a Patent?

DEREK FAHEY, ESQ.

Discovering that a competitor owns a related patent does not automatically mean a business must abandon a product. The practical answer depends on what the patent claims, whether those claims are enforceable, and whether the proposed product practices every required claim limitation.

Does The Product Infringe?

A registered patent attorney may conduct a freedom-to-operate analysis to determine whether a proposed product or process is likely to infringe an enforceable patent. The analysis begins with the patent claims, which define the legal scope of protection.

Claim terms are interpreted using the patent specification, prosecution history, and appropriate outside evidence. The proposed product is then compared against each limitation of the relevant claim. Literal infringement generally requires every claim element, or its legally recognized equivalent, to be present. If at least one required limitation is absent, that claim is not literally infringed.

Is The Patent Valid and Enforceable?

A validity analysis examines prior art and the circumstances surrounding prosecution. Counsel may search for patents, publications, products, or other public disclosures that predate the patent and were not fully considered by the USPTO. The objective is to evaluate whether the challenged claims are novel, nonobvious, and otherwise enforceable.

Can The Patent Be Challenged?

Depending on the result of the infringement and validity analyses, a business may consider a formal challenge. Potential procedures can include pre-issuance submissions, post-grant proceedings before the PTAB, ex parte reexamination, or a federal court action seeking a declaration of noninfringement or invalidity.

Because the available procedures, deadlines, and risks differ significantly, the business should evaluate its product design, commercial priorities, and litigation exposure before choosing a path.