When we receive a search or examination report in which an earlier document is cited, two of the biggest concerns our clients raise are whether they can still obtain patent protection in the face of the earlier document and whether the owner of the earlier document can stop them making and selling their invention.
These are legitimate concerns, and many inventors are surprised to learn that they relate to two very different concepts in patent law: patentability and infringement. In an effort to provide some clarity, our comments on each of these concepts are provided below.
Patentability
Patentability is simply whether an invention qualifies for the grant of a patent. The major (although not the only) tests for this are whether the invention is new and non-obvious, and it is important to note that any document published anywhere in the world before the priority date of a patent application can be cited. However, provided that an invention meets the criteria of being new and non-obvious, it is most likely eligible for patent protection.
On the other hand, a patent does not give its owner the right to produce the invention, and instead only provides the right to exclude others from producing the invention during the term of the patent. As a result, the fact that an invention is patent-eligible means that the patentee can stop others from copying his or her invention, but does not guarantee that their invention doesn’t infringe another party’s patent.
Infringement
Patent infringement occurs when the manufacture, sale or use of a product falls within the scope of the claims of a granted patent. Therefore, the only documents that are relevant to the question of infringement are live granted patents (and pending patent applications). In general (and with a few exceptions), this means that it is only possible to infringe patents that were filed in the past 20 years and are still in force.
In addition, patent infringement is assessed on a country-by-country basis, meaning that in Australia, for instance, it is only possible to infringe an Australian patent.
In short, if an earlier document is cited against the claims of an application, it may be enough to stop you from obtaining patent protection for the invention. However, if the earlier document is no longer in force in the country or countries in which you wish to manufacture or sell the invention, it cannot be used to stop your commercial activities.