Patents are sometimes visualized as fences, designating where property lines run.  But where the confusion seems to reside, is whether these fences are delineating where you can run free or where others can’t go. To put it in IP jargon, having a patent is not the same thing as having freedom-to-operate.

Freedom-to-operate means that you can make, use and sell your product or process without infringing someone else’s patent rights.  For this analysis, the question is whether there are patents (not owned or licensed by you) that cover your product or process.

When you have your own patent, this addresses the question of whether you can prevent another (such as a competitor) from making or selling a product or using process that is covered by your patent claims.

Illustrating freedom-to-operate

Consider the diagram below.  Imagine you have a patent and your competitor also has a patent. The breadth of what each patent covers is represented by the purple and blue circles, respectively.

In scenario A, there is no overlap – you each play in your own sandbox.  Your patent doesn’t cover your competitor’s technology and the competitor’s patent doesn’t cover your stuff.  In scenarios B-D, there is overlap.  Let’s start with C and D.

In C, your patent is broader and so it covers everything in the competitor’s patent plus more.  Does this mean you have absolute freedom-to-operate, that you have no IP constraints on making any product that falls within the purple circle of your patent? No. And this is where the confusion seems to come in for some folks.

Let’s add a few examples to scenario C to illustrate this point.

One product is represented by the green X.  This falls in the scope of your patent, but it is outside the blue circle representing the scope of the competitor’s patent.  This green X has freedom-to-operate, at least with respect to this particular competitor’s IP.  But now let’s take the product represented by red X.  It falls within both circles. In this circumstance, you do not have freedom-to-operate.  Even though your patent covers the product, so too does your competitor’s patent.

How can this be? This often occurs with related genus and species claims and with claims that are improvements on an existing technology or product.  Let’s take a simple example.  Your patent claims any chair with 4 legs.  Your competitor’s patent claims a chair with 4 legs constructed from plastic each having wheels.  If you make a chair with 4 legs constructed from wood – this would be an example of the green X.  But say you make a 4-legged chair from plastic and add wheels.  This falls under your patent because it has 4 legs, but it also falls under the competitor’s patent because of the plastic and the wheels. This version of the chair is the red X, where you have a patent covering your product, but you do not have freedom-to-operate.

Scenario D is the reverse of C, with the competitor’s patent having the broader scope. In this case, anything in the scope of your patent is necessarily covered by the competitor’s patent.  Your patent does not provide freedom-to-operate for products represented by the green X or the red X.

Now let’s move back to B, a scenario where your patent and your competitor’s patent overlap in some features but not others.

For an example, let’s say you have a patent to dining room furniture having 4 legs and your competitor has a patent to chairs made from wood.  If your product is a wooden dining room chair, it would be like the red X, falling in the territory covered by both your patent and your competitor’s.  On the other hand, if you make a dining room table with 4 legs, that would be covered by your patent but not the competitor’s patent – represented below by the green X.  The dining room table is an example where you have a patent covering your product and you have freedom-to-operate.  The red X (the wood dining room chair) is an instance where your patent covers your product but you do not have freedom-to-operate.

What each of these scenarios illustrate is the differences between having a patent and having freedom-to-operate.  It’s 2 separate questions.

In fact, you could have no patents and no freedom-to-operate if your competitor had a patent covering your product.  It’s also possible that you have no patents and your competitor also lacks patents covering the product.  This latter situation would give you freedom-to-operate.  But, because you do not have patent covering the product, it is quite possible that this competitor or another one could come along and freely copy your product.  Neither of these last two situations is where you want to be.

Map it out!

What is the upshot of all of this?  It comes back to the question you set out to address.  If you want to know whether you can make, use and sell the product you have in mind, you’ll want to have a look at the patents out there and how they relate to your product and methods of making and using it.  I often refer to this as an IP landscape.

If your issue is whether you can keep a competitor from imitating your product or something similar to it, you’ll want to look at your own patent portfolio and address whether and how it relates to competitors’ product and processes, as well as your own. I generally refer to as an IP portfolio assessment.

Both of these issues have their importance.  To be differentiated in the market and reduce the risk that you will be blocked in your path to commercialization, an IP landscape helps map a path forward.  To maintain your product differentiation and prevent competitors from encroaching into your sandbox, a strong IP portfolio comes into play.  Putting both together gives you an overview of your IP fitness level and where you can take action to strengthen your competitive position.