What is a design around?
A design around refers to a product that has been intentionally designed or modified to avoid patent infringement. The goal of a design around is to reduce the risk of a patent lawsuit or, if sued, to avoid or minimize liability for infringement. In order to design around patents, you need to determine where the line is drawn and then see how far you can get away from the line.
Designing around patents involves a careful study of the patent, including its file history (i.e., the back-and-forth communications between the applicant and the patent examiner). The goal of a smart and effective design around is fair competition – it is respecting the patent by navigating around the boundaries of the property so as to avoid trespassing.
Which part of the patent are we designing around?
The claims of a patent define the legal protection afforded to the patent owner. In utility patents, the claims are typically arranged in a hierarchy known as a claim set. Each claim set starts with an independent claim usually followed by several dependent claims. One common metaphor likens patent claims to landmines. The purpose of a design around is to navigate around those landmines by omitting elements recited in the claims. Omission is the key to avoiding patent infringement.
A design patent contains only a single claim which basically says look at the drawings. The figures of a design patent form the claim.
How to design around utility patents
To design around a utility patent, the focus should be on the independent claims. Each and every independent claim must be thoroughly analyzed with the goal of omitting at least one key feature (aka “claim element” or “claim limitation”) in the design around product. The more omissions, the better. By leaving out multiple limitations recited in an independent claim, you increase your arguments of noninfringement, thereby improving your odds of avoiding liability.
What is the doctrine of equivalents, and why does it matter?
Before congratulating yourself on sidestepping the independent claims, you will need to grapple with a big, messy gray area known as the doctrine of equivalents. Up to now, our discussion of avoiding claim elements has been a straightforward issue. This issue has a name in the patent world: literal infringement. Literal infringement tends to be more black-and-white, meaning that you can easily tell whether or not a product includes a particular claim element.
The doctrine of equivalents, on the other hand, is a complicated analysis used by patent owners to assert infringement when literal infringement is not found. Analyzing this doctrine to reach certain reasonable conclusions requires a detailed review of the file history of the patent, including prior art cited by the USPTO and the resulting amendments and arguments made by the applicant to overcome rejections.
What clues can file histories provide to design around patents?
A great deal of work goes on behind the scenes in order to get a patent granted. This is especially true of utility patents where multiple Office Action rejections are expected throughout the course of a single utility application. Studying the file history may provide valuable insight on claim amendments and arguments made by the applicant in order to get the patent approved. Any previous concessions or admissions by the applicant may limit the scope of patent protection.
How to design around a patent family
Before concluding that your design around product is safe from infringing the one patent you found, you should double-check to see if that particular patent belongs to a patent family, including any parent and child filings. A Freedom-To-Operate (FTO) patent search can help uncover related and unrelated patents. You will want to review the claims of the related patents and perform the same analysis.
If your budget allows for a more thorough review, it may be worthwhile to investigate related foreign filings to see if the patent owner made any limiting statements abroad that would facilitate an interpretation of the US claims favorable to your design around.
Last, but not least, it is possible that the patent owner may have one or more pending continuing applications where the claims are in a state of flux. Even if you have a level of assurance that your design around does not infringe the issued claims, it would be prudent to track the status of the pending claims in the continuing applications. The incentive to design around issued claims, which are fixed in stone, is the reason why we advise our clients to file continuations before their parent applications are issued.
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