The relationship between patentability and patent clearance is sometimes tricky. We think: I'm producing a product based on my own patent, so how could I possibly infringe someone else's exclusive rights? And yet it is possible. And not as rare as you might think.
Patentability is evoked in the context of statutory conditions to be met by a technical solution in order to be eligible for patent protection. These include novelty, the presence of an inventive step, and industrial applicability.
While industrial applicability of a technical solution boils down to the type of invention and proper organisation of the patent description, there is more to consider when evaluating novelty and a potential inventive step. Scientists, persuaded of the high level of innovation of solutions that are the true children of their labour, often struggle come to terms with the fact that another inventor has already achieved what they believe they had invented, sometimes long ago to boot. They disregard patent literature searches, relying instead on the knowledge derived from industry publications and from the market. Their attention, however, is often limited to the territory of Poland. Yet the novelty of the "patentable" solution requires it to be global. With no exceptions, any prior disclosure of the substance of a solution puts its patentability into jeopardy.
So how to avoid working in vain? It is enough to regularly conduct state-of-the-art research based on searches of patent and non-patent literature, and, in addition, to monitor the developments in the market and on the internet. And once an invention is finally developed and ready to be filed in the Patent Office, it is necessary, in order to anticipate experts' objections, to conduct or commission a patentability assessment prior to the filing. This will confirm that the solution is novel and non-obvious in the light of the current state of the art. What if the results of the assessment give rise to doubts? It's not the end of the world yet. By drawing conclusions from the assessment, it is possible to appropriately reformulate the scope of the solution's protection and still be granted the patent.
A product or a technology has patent clearance if it can be brought to market in a particular country without the risk of infringing someone else's patent or protection right for a utility model. A patent clearance assessment should be conducted in at least two instances: when the product/technology is developed using a component covered by someone else's protection, and directly before introducing the final product/technology to the market.
The results of a patent clearance assessment will clearly identify the locations where a product/technology cannot be introduced to market. In addition, we learn in which countries patent protection has expired and, consequently, where there is no risk of violating the right of the protection we seek. If the applicant is an aggressive player and lays his money on winning a dispute with the owner of the protection in the country at issue, a patent clearance assessment can help predict the actions of the competitor and prepare the arguments accordingly.
Patent clearance versus patentability
Determining patentability of a solution has nothing to do with analysing its patent "clearance"! The concept of patentability is reserved for solutions analysed for conditions of patentability, while patent clearance relates to market issues and to the aspect of infringing the law as a result of introducing a solution or a product to market.
Likewise, patentability and patent clearance assessments are conducted differently. The main differences include the temporal and territorial scope of the assessment. To find out whether a solution is new, it is necessary to study patent and non-patent literature from around the world. If one wants to know whether a solution will infringe an existing patent on the territory of Poland, they should check patent documents that are currently or may soon be in force in Poland. Since patent protection is valid for a maximum of 20 years (with an optional further 5 years for specific inventions), a patent clearance assessment may be time-limited. Now, it is irrelevant for patentability analysis whether a publication of the document containing a particular disclosure took place a week ago or a century ago. And there's yet more to it...
Patentable, but with no clearance
It is of utmost importance to the inventor to understand why a solution that has been granted a positive patentability assessment, i.e. it has been found to be novel and non-obvious, may still infringe someone's exclusive right.
There are countless instances of such situations, but it's easiest to explain using the example of a product patent claiming protection, for, say, a new biologically active substance, and another patent belonging to another entity for its use in the treatment of a condition other than the one indicated specified in the first patent. There is no reason to consider that the NEW application of a known substance does not meet the patentability criteria. The entity claiming a new application will therefore be granted a patent. But can such an entity use a substance patented by someone else in accordance with an application of its own devise? Usually the answer is negative (assuming, of course, that the new application is to be introduced in the territory of the country where the product/patent for the substance is in force). Therefore, it is said that product protection is very potent and far-reaching, as the monopoly it produces extends to all applications. Still, one should not forget that this does not preclude positive patentability of another application.
Do not confuse them!
It is problematic to explain why someone has a patent, and yet still cannot use the solution for which they have a monopoly and therefore need to "make terms" with the owner of another patent. Each and every one of such situations should be evaluated separately, with a strong focus on both specific technical expertise and patent law.
The aspect of patentability and patent clearance is confused even by patent attorneys, especially those with legal formation, who are unlikely to conduct patent studies or advanced analyses of converging technical features of inventions. Confusing patentability and patent clearance may bring about ruinous consequences, if costly market and marketing steps are taken as a result of ill advice.
An inexperienced attorney may claim that after a patent is granted, everything may be done within its scope. Therefore, lawyers and legal counsels, prior to applying for the competence to deal with technical solutions, should put their skills to the test in the following manner, for example: take a chemical solution, e.g. a new substance described based on a Markush structure, for convenience create a list of possible substitutions of one page of A4, identify the nearest relevant prior art and assess whether the client may obtain a patent protection for it and whether they will not infringe someone else's patents, for instance in Poland.