Patentability and Freedom to Operate

by Ryan P. O'Connor

There is often confusion between two fundamental concepts of patent law: patentability and freedom to operate. We will try to shed some light on this important issue.

A patent gives you the legal right to exclude others from making, using, or selling an invention. A patent does not actually give you the right to practice (or “operate”) your own invention. The reason is that there can be other patents that are related and would be infringed if you carry out your invention.

Consider the following diagram for a given invention:

A granted patent cannot guarantee freedom to operate. Inability to practice one’s own invention actually happens frequently. Consider that company A has a patent on an initial concept, and then company B patents an improvement to the initial concept. Company B cannot practice its patented improvement without infringing A’s patent, because the basic invention is patented. Furthermore, if company A wants to practice the improved invention, it needs a license from company B. In this situation, companies A and B can cross-license their patents to each other.