How to Successfully Design Around an Existing Patent
In this article, we will discuss what information is discoverable when attempts to design around an existing patent are made. The article will also discuss the requirements for a successful design-around. Let’s begin by defining what the phrase “to design around” actually means. It refers to an alternative to the patented invention that does not infringe the patent claims. A design-around is an alternate version of the patented invention, but it cannot be the same as the patented version.
Information that is discoverable about attempts to design-around a patent
A recent decision in a patent infringement lawsuit reminded practitioners that information about attempts to design-around an existing patent is generally discoverable. The case in the Northern District of Illinois emphasized that factual information about such attempts is distinguishable from privileged opinion and mental impressions. It suggested that the discovery of design-around information may require exceptional circumstances. Therefore, patent attorneys should take care when preparing for such a trial.
The effectiveness of a design-around depends on whether it alters the claimed invention’s functionality or novelty. For example, a design-around applicant should consider if the changes use long-standing prior art, such as those cited by the patent examiner. Information about attempts to design-around an existing patent may be discoverable only if the applicant can show that the changes do not use long-standing prior art.
The information can be gleaned through the use of reverse engineering. Using such techniques can aid the process of focusing discovery requests and prioritizing them. Often, a party over-discloses information, resulting in an over-abundance of public information. Therefore, if a party is aware of an attempt to design-around an existing patent, it should pursue discovery on this information.
Patent infringement lawsuits can be expensive. Most companies attempt to design-around an existing patent to avoid infringement suits. Although the risk of infringing a patent remains, the ultimate goal is to minimize the potential for infringement. To this end, companies should carefully evaluate any new design and use the tips in this article. When considering a new design, it’s best to seek a patent attorney’s opinion early in the process.
When designing around an existing patent, you must first understand the nature of the patented invention. Identify the features of the patented product that are similar to yours, but do not infringe on the patent’s claims. In addition, you must know how to properly incorporate a variation of the patented design into your product to avoid being infringed. If you have a product with multiple features, you should select several variations to add extra distance between the product and the patent.
The first step is to find out if the patent is part of a patent family. To do this, you should conduct a Freedom-To-Operate (FTO) patent search to identify related and unrelated patents. Then, you should check the related patents and related foreign filings to find a similar interpretation of the US claims. After that, you must decide whether to go ahead with a design around.
Unless you are a patent attorney, you should not try to implement a design around without the advice of a lawyer. Depending on the jurisdiction, a patent infringement lawsuit order may protect you from discovering the information that you need to develop a successful design around. This means that you should mark all communications with attorneys with “Attorney-Client Communication” or “Attorney Work Product” to protect yourself from being sued by the patent owner.
The basic principles of how to design around an existing patent rest on the scope of the patent rights and the non-infringement of the new design. It is crucial to understand the technical characteristics of the patent law document and the underlying patent technology. A patent’s technical problems are determined by its difference from proximal technologies, and the effect it solves. Detailed analysis of the problems can be done in a patent law document.
Requirements for a successful design-around
Whether or not a design-around is successful is largely dependent on the change it makes to the claimed invention. A successful design-around will take into account changes that are consistent with long-standing prior art. Often times, the patent examiner will cite this prior art as being particularly relevant. Alternatively, the applicant may make changes that are entirely novel, but nevertheless use long-standing prior art.
As with any patent infringement strategy, a design-around requires a thorough review of the patent’s terms. This includes the application history, prior art cited by the USPTO, and amendments and arguments submitted by the applicant to overcome rejections. Moreover, the design-around must be based on the applicable laws. Louis Ventre, Jr., is available for legal consultation and reviews of existing design-arounds.