Acquiring Patent Search Reports with No Fear of Wilful Infringement under US Patent Law

Abstract

To make a business decision, a company may conduct a patent search to make sure that it will not infringe patents or that the technology under development will be patentable. Because a patent search may relate to technology development, a company must be aware of wilful infringement caused by acquiring a patent search report. Wilful infringement occurs when ‘the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.’ If wilful infringement is established, courts may award treble damages to the patentee. By producing a patent search report, a company may be proved to learn an objectively high risk of patent infringement. Therefore it is necessary to analyse the risk of acquiring a patent search report and to figure out how to prepare a riskless report. This article discusses five types of patent search report and identifies how each type may lead to wilful infringement. Further, drawing from the case law, this article provides five points which help prepare a riskless report: (i) retaining a competent counsel; (ii) being honest to your opinion counsel; (iii) framing reasonable claim construction; (iv) providing a comprehensive analysis rather than conclusory statements; (v) focusing on prosecution history estoppels.