Jacksonville, FL asked in Copyright, Products Liability and Patents (Intellectual Property) for Florida

Q: How much does it cost to review a product we are producing for a client's promotional gift to avoid patent violation?

2 Lawyer Answers
Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: The costs vary but it can be expensive. This is called a freedom-to-operate or clearance opinion.

See == https://www.flynniplaw.com/services/legal-services/freedom-to-operate/opinions

The first step is that a freedom-to-operate search needs to be done for issued patents that have not expired and pending applications to look for claims that might read on your product.

Then a patent attorney needs to find at least one element (noun, verb, relationship) within each independent claim of each patent or pending application.

Sometimes a product has more than one novel feature so the process may have to be repeated more than once. For example, you may have a mountain bike that you want to sell that has a cutting edge gear shifter. The mountain bike may also have an interesting feature in the shock absorber in the front fork. That would require two different searches and two different set of documents to review.

So depending on the number of patent claims to be reviewed, this can easily be more than 10,000 dollars often much more.

Now sometimes, the product that you are seeking to make has been around for a very long time and is already being sold by many people. In that case, it may not be necessary to do a freedom-to-operate search. These nuances need the input of a patent attorney with some experience.

Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: I want to clarify a sentence that was not as clear as it should have been.

Then a patent attorney needs to find at least one element (noun, verb, relationship) within each independent claim of each patent or pending application THAT IS NOT PRESENT IN YOUR PRODUCT.

There are times where the literal meaning of a term that is a claim element may be expanded under a doctrine of equivalents.

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