by Norman L. Sims, Shareholder, The Dobrusin Law Firm
Reprinted from X-OLOGY Magazine, Summer 2013.
Businesses expanding in other countries have two primary patent issues to consider. First, does any third party have a patent that would prevent you from selling, manufacturing or using your product or service in the country? Second, can you secure patent coverage on your product, its manufacturing process or method of using it (your “Technology”)?
As to the first issue, it is advisable to perform or have performed a search of patent databases in your target country for patents related to your Technology. It is advisable to hire a patent attorney or a search service to perform the search, as searching patent databases, especially foreign databases, requires some background knowledge of those databases in order to get reliable results. However, if costs are an issue, anyone with a thorough understanding of the technology can perform a search on free databases available on the Internet; for instance, Free Patents Online (where Japanese, European and World intellectual Property Organization databases are available) (www.freepatentsonline.com) or Espacenet, operated by the European Patent Office (www.epo.org/searching/free/espacenet.html).