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Patent Clearance. Subtleties and Nuances.

17 Apr 2017 (updated at 30 Mar 2024)
Head of Department / Patent Attorney / Mechanics Engineer

In the first lines of the article, it is necessary to answer the question: What does the patent clearance mean?

So, the patent clearance is a legal property of the subject-matter of intellectual property, the essence of which is that it can be freely used in a particular country without the danger of infringement of the valid patents belonging to third parties on its territory.

The purpose of a search for the patent clearance (patent clearance examination) is identifying the features of the patented invention used in the subject-matter, despite the differences contained in other features.

When exercising a search for the patent clearance, the subject-matter shall be checked as a whole. All or most of the technical solutions implemented in it shall be assessed. The search shall be exercised for each particular country. The patent laws, rules and judicial practice of all countries in respect of which the search is exercised shall be taken into account. As a rule, for the newly created subject-matters, the search shall be exercised to ensure their patent clearance and shall be an integral part of the general patent research carried out both before and during the development.

Why is it necessary to determine the patent clearance of the technological items?

The existence of the patent legislation in the majority of countries of the world providing the grant of patents (certificates) for various kinds of industrial property, as well as the liability for the patent infringement, stipulated by the legislation, lead to the necessity to undertake the measures to prevent the possibility of infringing the patents in the countries, where the relevant technological items are being sold, including on the territory of Russia, i.e. the measures to provide their patent clearance.

Providing the patent clearance will allow realizing (using) technological items (machines, devices, equipment, materials and technological processes) freely, without a fear of infringing the exclusive rights of third parties.

It follows from the definition of the patent clearance, that the subject-matters, which have a patent clearance in respect of any country are the subject-matters that are not subject to the effect of the patents for inventions, utility models or industrial designs granted by the authorized patent office and which are valid on the territory of that country. Also, the subject-matters must not infringe the registered trademarks, as well as the firm names and indications of the origin of the goods.

In the world practice, there are also other terms for determining the notion of the patent clearance, for example, “patent invulnerability” (Germany), “freedom from the protected patent rights” (the USA), etc.

It is known that the implementation, exhibition or an offer to sell only a particular material object (device, method, substance) on the territory of the country may lead to the patent infringement. However, it is generally accepted that the notion of “patent clearance” is also applicable to the technical documentation by which this object is manufactured or will be manufactured (including corporate projects, standards, technological documentation, etc.)

Devices, methods, substances shall mean the following, correspondingly:

– articles and means of production, i.e. machines, tools, equipment, apparatus, installations (including construction ones), their components (elements), as well as all other articles which can be characterized by constructive or schematic features and their combination;

– technological processes, methods and operations, characterized mainly by technological features (the sequence of actions and methods, their nature, applicable operating conditions, parameters, apparatus, tools, materials, etc.).

– materials, compounds (compositions), pastes, plastics, paints, etc., characterized by a combination of components (ingredients), their ratio, structure, etc., including those obtained by chemical means.

How to determine the patent clearance?

The patent clearance is a relative concept, that is, it is determined only with respect to particular countries and only for a certain date. It is entirely connected with the territorial and temporal effect of patents. The subject-matter that does not have the patent clearance concerning a number of countries where it is subject to the patents, which are in effect there, may nevertheless have the patent clearance concerning all other countries where there are no such patents. The same subject-matter, in the course of time, will also have the patent clearance in respect of the countries, where is has been subject to the effect of the patents which ceased to be active (due to the termination or for other reasons).

The purpose of the patent clearance examination is to determine the possibility of implementing (using) this subject-matter in a particular country or a group of countries and to identify the measures to ensure this implementation without infringing the patents of third parties. It means the identification of all active patents in a particular country (countries) that concern the subject-matter, their analysis and also the study of the circumstances that could facilitate the free implementation of this subject-matter in the country (countries) concerned.

When carrying out the patent clearance examination, it is necessary to provide a combination of its three aspects: legal (judicial), technical (engineering) and economic, in order to assess correctly the significance of each of them in this particular case.

The legal aspect of the examination involves the proper and full consideration of all legal issues relevant to this case and their assessment in the concrete situation (including when determining the scope of rights from the patent, the possibilities of infringing it, opposing it, etc.).

The technical aspect involves the correct assessment of the technical essence of the invention (utility model) under the patent, in comparison with the subject-matter under examination; the identification of the materiality of particular features and their significance for the patented invention or for the subject-matter under examination; the assessment of the role of the constituent parts and other elements for the subject-matter taken as a whole; and the identification of the ways of the possible circumvention of the patent, etc.

The economic aspect involves the assessment of the scope of possible claims of the patent holder in the event of the infringement of his patent and the damage to be compensated.

Errors and inaccuracies when exercising the patent clearance search can lead to significant material damage, which makes the examination very important.

Thus, the patent clearance examination is much more complicated and requires a higher qualification compared to all other kinds of patent examination. This factor determines the increased requirements for the persons exercising the patent clearance examination.

Head of Department / Patent Attorney / Mechanics Engineer