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Author Topic: Determining lack of IP??  (Read 637 times)

xroxer

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Determining lack of IP??
« on: 07-06-17 at 06:34 pm »

A customer of ours wants us to build them a device they can use in their products.  One criteria is that the device and all its materials must have public right to use with no prohibiting IP.  Essentially they do not want to license any part of it from anyone.

To build the device we had to search the public scientific journals and come up with a design for the device.

Any idea on what we need to do next to absolutely make sure this device will have no IP around it?
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MYK

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Re: Determining lack of IP??
« Reply #1 on: 07-07-17 at 01:46 am »

What you're looking for is sometimes called a "clearance opinion" or "freedom to operate opinion".

http://www.ipwatchdog.com/2010/01/21/difference-between-patent-searches-infringement-clearance/id=8521/

If what you are putting together is based on relatively recent technology, then they can be very difficult to put together, and would not be able to exclude the risk of patent applications that have not been published yet.  If you're finding the articles in old journals (more than about three years old), you can search based upon the authors to see if they have filed any applications, and can try to search generally for multiple aspects of the product.  There aren't any guarantees, though.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

still_learnin

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Re: Determining lack of IP??
« Reply #2 on: 07-07-17 at 10:17 am »

A customer of ours wants us to build them a device they can use in their products.  One criteria is that the device and all its materials must have public right to use with no prohibiting IP.  Essentially they do not want to license any part of it from anyone.

To build the device we had to search the public scientific journals and come up with a design for the device.

Any idea on what we need to do next to absolutely make sure this device will have no IP around it?

Since you posted in the Patents section of the forum, I'll assume that by "have no IP" you mean "won't infringe any patents."

There is no way to be "absolutely sure" that you won't infringe a patent. For lots of reasons, including the "not yet published" problem" mentioned by MYK. But another major cause of the uncertainty is that you don't patent a device or a product, but instead a feature or particular function of a product/device.

Suppose the device you're asked to build is a laser printer. Think of all the parts, components, and technologies involved: the paper feed mechanism; the cartridge holding the toner; the chemistry of the toner itself; the usb connector; the software stored on the ROM; the digital logic implemented on the circuit board; the method used to solder the components onto the circuit board; etc. etc. Any one of those components (or any of its subcomponents) could be covered by a patent claim.

To be "absolutely sure," you can't limit your searches to printers, since features/components can be used in vastly different areas of technology. There's just no feasible way to search a patent database for all -- or even more than a few of -- the features in a product/device.
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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.
 



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