[Patent Talk] Is a Rejected Patent Free for Anyone to Use?

In a previous column, I explained that a freedom-to-operate (FTO) analysis is essential when a company launches a new product or service. This is because a business can operate stably only if its new product or service does not infringe anyone else's patent rights. That column described how to analyze patents depending on whether they are registered patents, published applications or unpublished applications; this column looks in more detail at how to analyze published applications.

Clients sometimes ask whether, since a patent related to their technology was rejected, they are free to practice that technology. Unfortunately, the answer is no. A rejection merely means that similar prior art had been disclosed before the application's filing date, so the patent cannot be registered; it does not mean that the technology is free for anyone to use.

The most important question in an FTO analysis is whether there are registered patents related to the technology to be used as of the time of the analysis. A rejected application never resulted in a registered patent, so it provides no meaningful information for an FTO analysis. What matters instead is an analysis of the scope of any registered patents among the prior art references cited during the examination of the rejected application.

So what patent information can tell us which technologies are free to practice? The answer is information on expired patents. Once a registered patent lapses, the technology covered by its claims can be freely practiced by anyone. A patent lasts for 20 years from the filing date, and it lapses when this term expires or, even earlier, when the maintenance (annual) fees are not paid. Therefore, to reduce the risk of unnecessary patent disputes, a list of the core patents related to the business...