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Imagine the situation: you are part of a software development company who makes and sells Fantastic Product. Then one day a letter arrives to inform you that part of Fantastic Product infringes on a patent held by Evil Corporation.

In this situation, Evil Corporation will most likely attempt to either get you to pay to license it, or sue you, depending on the country. You decide to modify your product so it doesn't infringe on their patents because you don't want to pay the fee. My question out of curiosity is what does the law say about a reasonable time to do this? Obviously software development isn't an overnight process and you would need time to redesign, test, and then roll out the replacement. Are you even entitled to any time, or is it at the discretion of the patent holder?

  • You can take as much time as you want. What legal grounds would the patent holder even have to dictate your development process? Of course, what you can not do, while you are in the process of removing the infringing parts, is continue to sell or market the product. You will have to stop selling and marketing the product, recall all products that are already in the market, and retroactively pay license fees for all products you have already sold. But how long you stay in this state is up to you. (Alternatively, you could only do business in countries where software patents are illegal.) – Jörg W Mittag Dec 1 '14 at 8:20
  • @JörgWMittag Thank you for your post, but can you please post your information as a proper 'answer' below? Posting answers as comments is heavily discouraged because comments do not allow for the proper vetting of its content (voting, editing, ongoing improvement, etc). Thanks. – Robert Cartaino Dec 1 '14 at 17:27
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The software development company may consider the following options in the same order mentioned below:

  1. Patent infringement analysis
  2. Invalidation
  3. Product re-engineering

Patent infringement analysis: In patent law, it is the "claims" that defines the metes and bounds of an invention. In other words, claims define the scope of patent right.Infringement analysis is performed to determine whether a product or a process infringes upon an existing patent claim.In infringement analysis, the scope of the claim should be determined and should be checked whether all elements of the claim are present in the product or process. Infringement analysis is started by reading the claims mainly concentrated on the independent claims, if you don't infringe the independent claims, you won't be infringing the dependent claims (which are narrower, by definition). If you are not infringing on the independent claims then you may argue during the litigation that your fantastic product is not infringing on the patent owned by the Evil corporation. In-case, you are infringing on the independent claim then you may consider the next step.

The next step is invalidating the patent owned by Evil corporation.Invalidation means proving that a patent was wrongly granted and having the same revoked. This approach can be used when there is a good probability of invalidating the relevant patent(s). Invalidation, is an effective approach in some cases, it can be a time-consuming affair, as invalidation proceedings are generally carried out in courts.

The final step that can be considered is product re-engineering. During this step a freedom to operate study may be advised. A Freedom to operate provides an analysis to minimize the risk of getting sued by others. Further, also dig out patents, which have expired (in most countries its 20 years). There may be many useful technologies which can be used from these expired patents. Finally, you may find a list of patents that are relevant to your product/technology and helps you craft a strategy.

For further details please check the link below http://www.invntree.com/blogs/my-product-infringing-others-patents http://www.invntree.com/blogs/why-freedom-operate-study-must-technology-companies

Regards

Vinay

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