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Let's say I am building on a high-tech, novel product but that combines several techniques, components and/or innovations that I suspect may be patented (though those may have expired).

I would like to do an FTO search to see if I'm in the clear but my guess would be that "probably not" and "there's at least several dozen patents covering the components/techniques". If there's a handful I'd like to license them, but if there are dozens or hundreds, it is unmanageable.

I had read that if you are aware of the patents you're infringing, the charges are tripled if you're taken to court.

a. Does your performing a FTO search prove that you were aware of the other patents and willfully infringed them, hence justifying higher costs?

b. What if I file my own patent for the novel product, while citing the patents that I infringed, then building the product. Does that constitute willful infringement?

Thank you

aed

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A. Yes, it is possible. Your patent counsel might provide an opinion of noninfringement or invalidity, leaving you with a clear mind and a defense to willful infringement.

B. If you cite a patent, then you are presumably on notice of it and this could be used as evidence that any infringememt was willful. You have a duty of disclosure before the Patent Office, so you would need to disclose a patent material to patentability of your application. Best get that opinion of counsel of noninfringement or invalidity.

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    An alternate, if you really do not know of anything specific at this point, is to ship the product and see if anybody unhappy surfaces at some point. Those that follow this approach figure they can deal with it after they have a going concern and some wherewithal of money and patents. Of course in 1990 Kodak had to stop a whole product line in its tracks, destroy their machinery and inventory and work-in-process and pay a 1990's billion dollars to Polaroid for infringement of instant camera patents. So there are dangers in that approach.
    – George White ♦
    Jan 31, 2013 at 3:14
  • Thanks Yorick and George for the insightful comments. That's precisely the issue: on one hand the company is just starting and cannot afford to license dozens (hundreds?) of patents before it makes any sales - I would rather deal with lawsuits (if any) as they come. On the other hand the product is most likely novel (though using possibly patented components) so I would also like to protect it somehow without exposing it to the triple damages issue. Is there a middle-ground?
    – aed
    Jan 31, 2013 at 5:52
  • You seem to have rejected the idea of obtaining an opinion of counsel. You may elect to ignore best practices, but the days of counting on the mystique and inaccessability of the patent system are long gone. Good luck.
    – Yorick
    Jan 31, 2013 at 6:42
  • Searching for, finding and submitting references to the USPTO as part of your application is not, itself, necessarily an admission that you are knowingly infringing something. It is an admission that you know about the patents but you might have an analysis in your files that explains the subtleties of your reasoning that there is no infringement.
    – George White ♦
    Jan 31, 2013 at 7:34

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