Acquiring freedom to operate

Question

I am developing a hardware product that I would like to sell. It is fairly novel, in that there is nothing with similar capabilities on the market today. However, I have identified at least 1-2 utility patent applications (either in US or EU patent system) that make broad claims encompassing some of my methods. That is, these patents speak of general methods, but make no specific mention or detailed description of my method, and possibly have not considered my specific method.

These patents are still not formally approved/issued as far as I can tell. If it matters, one is from a large multinational, and one appears to be from an individual. I previously paid an IP attorney to discern freedom to operate. I get the sense that he didn't spend much time performing this analysis (and to be fair his price was not high), but his sentiment was that the patents were too broad (in that even if they did get issued they might not stand up in court) but that they still covered what I was attempting to do.

So my question is: given that these patent applications may or may not pass, and even if they do pass may not hold up if challenged, how should I go about ensuring freedom to operate? I am planning to go to an IP attorney for a formal search, but I'm not sure if attorneys usually give advice on the strategy of acquiring permissions from patent holders. If I need to set some licensing/royalty agreement in case these patents are issued and held up as valid, I would prefer to do that now while I am still early in development. I want to minimize the 'leverage' the patent holders have in terms of pricing.

Answer 1

The first thing you need to do is consult with an attorney with respect to freedom to operate. Only after you fully understand where you stand with respect to the prior art can you consider potential licensing. Very often people misread claims as being broader than they really are. In general the longer and more detailed a claim is, the narrower the coverage. Patent applications especially tend to claim very broadly and the resulting patent, should it be granted, generally will have narrower claim language. In any case, you can't decide on the value of licensing without a legal opinion of your freedom to operate so start with that. If you weren't happy with the first patent attorney you went to, you may want to consider someone different. Especially one who is experience in the field.