Non infringement is the due diligence all inventors must take to avoid infringing on existing innovations that are already patented. Best practices for non-infringement can help your company avoid extensive, expensive lawsuits.

Avoiding Patent Infringement

To prevent patent infringement, inventors should:

  • Analyze and understand technology, design, and background documents for relevant innovations.
  • Review and study file histories and cited references for patents and prior art.
  • Construct claims with a comparison to previous claims.
  • Analyze target patents to ensure they do not infringe on prior art.

These steps can be taken strictly in the United States or review foreign patents as well.

Patent Invalidity vs. Non-Infringement

Most software license agreements in the United States have two provisions to prevent intellectual property (IP) infringement. First, the licensee is protected from third-party infringement claims by the software owner. In addition, the licensor agrees to disclaim implied warranties that the software infringes on third-party IP rights.

To understand this issue, it's important to understand the Uniform Commercial Code (UCC). This U.S. body of laws provides guidance for many types of commercial transactions. Most states adhere to Article 2 of the UCC to establish laws about the sale of goods. This article is also relevant for software licensing.

Article 2 contains several implied warranties, which apply to transactions without being explicitly stated in the contract. Sellers must explicitly disclaim these warranties clearly in the software licensing contract. Specifically, the item of concern is the implied warranty in UCC that states "Freedom from infringement or third-party intellectual property rights." This must be remedied with an indemnification statement as described above.

U.S. contract law states that contract provisions do not have meaning if they are not read, indicating that every item in a contract is included out of necessity. If the same remedies are included in two separate provisions, it raises questions about which should be followed.

Patent lawsuits are typically defended by claiming either non-infringement or invalidity, two separate legal issues that must be analyzed independently of one another. Because non-infringement is the more common defense, many invalid patents may go unchallenged by the court, thus making innovation of new products and services more difficult.

Reforms for this issue could include:

  • Removing the increased burden of proof for patent invalidity
  • Establishing a bifurcation rule that allows defendants to defer defending infringement issues until after the validity of the patent in question has been determined
  • Creating an incentive for competitors to bring litigation that successfully invalidates a patent

If you need help with non-infringement, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.