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Partner Richard Chinn Commented about Patent Infringement in Chemical & Engineering News

Explaining the degree of complexity of patent infringement questions, Dr. Richard Chinn, a partner at Grüneberg and Myers, lent his analysis to an article published yesterday.

The article appeared in Chemical & Engineering News (C&EN), a publication distributed to all members of the American Chemical Society. The focus of the article centers on an algorithm that searches chemical synthesis routes disclosed in patent literature. The software looks at the literature to determine when a chemical bond is formed in a patentably-significant way, then attempts to provide new routes that do not involve changes to these bonds. Such software presents a promising move toward the use of machine learning in patent law.

Dr. Chinn also noted that a full patent infringement analysis can be quite involved. He pointed out that companies often cover important intellectual property in a variety of ways, including with different method claims and other variations. Indeed, a well-developed patent portfolio can and should include claims that define coverage using a number of different types of parameters.

To avoid potentially high monetary infringement damages, companies often seek freedom-to-operate opinions from qualified U.S. patent attorneys. A written opinion from a patent lawyer showing a good-faith belief that a company’s behavior is not infringement can serve as evidence that the company was not infringing willfully. Courts consider willfulness when determining how much an infringer should pay a patent holder.

Still, a full opinion of counsel can be costly. Even dissenting Supreme Court justices have noted that a new company may have difficulty spending tens of thousands of dollars for such an opinion.

Software like that mentioned in yesterday’s C&EN article may be a useful aid for identifying synthesis routes which could more easily receive clearance in a full analysis by an attorney. Especially when a company has numerous interests in the industry, a helping hand from software could represent substantial cost savings in legal budgets. Dr. Chinn weighed in on these considerations for the chemical industry in yesterday’s piece in C&EN, providing valuable insight into the complexities of infringement.

Eric Myers