Designing around patent


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Designing around patent

  1. 1.  Designing around patent system 1 /30
  2. 2. 2 /30 Costs incurred by the participants in the patent system Opposing objectives Designing around patent Fiesto decision and effects Design around patent- From perspective of competitor Design around patent- From perspective of patent holder
  3. 3. Costs to patentee: R&D costs Delayed first sale or disclosure Cost of compliance with patent rules and laws (application fees) Legal fees Potential enforcement/defense costs (litigation) 3 /30
  4. 4. Costs to society: Higher prices for consumers Discourages further research in areas newly patented 4 /30
  5. 5. Provides notice to society Chilling effect on competition 5 /30
  6. 6. Patentee seeks to develop broad patent protection that: maximizes the opportunity to charge for monopoly costs; and minimizes the likelihood of a successful design around. 6 /30
  7. 7. Non-patentee seeks to create a competitive product: not burdened with the monopoly costs of the patentee; that maximizes the likelihood of a finding of noninfringement (or invalidity); and 7 /30
  8. 8. Bypass much of the R&D costs Capture market share 8 /30
  9. 9. Intentional “designing around” of the patent claims is not by itself a wrong which must be compensated by invocation of the doctrine of equivalents. Designing around patents is, in fact, one of the ways in which the patent system works to the advantage of the public in promoting progress in the useful art, its constitutional purpose… 9 /30
  10. 10. Often at the junction of prosecution history estoppel and the doctrine of equivalents. 10 /30
  11. 11. If a claim element was narrowed by amendment, and the claim amendment was made for a reason related to patentability, then there can be no infringement of that claim under the doctrine of equivalents. 11 /30
  12. 12. Provides a recipe for designing around for a competitor. Provides greater challenges for patent applicants in preventing design around efforts. 12 /30
  13. 13. Simplified designing around strategy in light of Festo read the prosecution history to identify amendments made for patentability reasons; 13 /30
  14. 14. Conservative design around strategies A) Select a solution from the prior art (if enforceable patent, then obtain a license, acquire rights) or B) Develop an alternative solution based on a problem-oriented approach and obtain a competent non-infringement opinion. 14 /30
  15. 15. Alternative design around strategy (prior to Festo and possibly if Festo overturned) a) focus on the broadest valid claim (identified based on review of prior art and prosecution history) b) substitute an element i) one that performs substantially same function in a substantially different way ii) identified by prosecution history estoppel c) obtain a competent non-infringement opinion d) adjust practice based on Supreme Court ruling in Festo. 15 /30
  16. 16. Draft applications with eye towards Festo - example strategies: A) file with narrower claims to avoid amending during prosecution B) use one-sided range criteria (avoid double ended ranges) C) format claims for clear demarcation between elements D) when forced to amend, add a new element rather than amend an existing element E) conduct a reasonably thorough art search before filing F) appeal rather than amend 16 /30
  17. 17. - No missing element possibilities. - No unnecessary estoppel. - No alternative methods/functions to get to same outcome. 17 /30
  18. 18.  File a Strong and Comprehensive Specification  Do a Thorough Prior Art Search and Draft Accordingly  Be Careful with Amendment Arguments and Claim Changes 18 /30
  19. 19. Claim Differences from Prior Art, not Embodiments Find and Claim THE Invention not Embodiments Embodiment = What the inventor is using or has made Invention = All combinations of pieces of the embodiment that overcome the prior art, claim the differences 19 /30
  20. 20. 20 /30 Differences: - sloped tail fin - wheels 2-1 versus 1-2 - faster - bent nosecone - wing attach point - tail powered - jets, not props - hold more cargo - wing attach - many wheels on - higher ceiling - new material
  21. 21. Capture all the Ground you can that is not Prior Art 21 /30 Capture the “Invention Territory”
  22. 22. Diversify Claims to Cover Invention Territory 22 /30
  23. 23. 23 /30
  24. 24. 24 /30 Avoid Unnecessary Claim Limitations
  25. 25. Stretch the Invention, Do Advanced Inventing 25 /30
  26. 26. Approach Claims From Different Angles An integrated circuit comprising:  a first conductive layer;  a second conductive layer overlying the first conductive layer;  an original via located between the first and second conductive layers;  a first overlay layer of the file structure defining a two- dimensional layout of a first conductive layer;  a second overlay layer of the file structure defining a two-dimensional layout of a plurality of vias; 26 /30
  27. 27. Make Sure Claim Limitations are Detectable Levels of detectability: simple inspection of product/literature non-detectable 27 /30
  28. 28.  Write note on Festo decision and effect. (2 marks)  Define design around. (2 marks)  Note on opposing objectives of patentee and competitor. (2 marks)  Note on Design around patent -from the perspective of competitor (5 marks)  Note on Design around patent- From the perspective of patentee (5 marks) 28 /30
  29. 29.   1.3_Witek_PT05_ses01_revppt.pdf  79/nanotechexplosion.pdf  http://www.uil-  http://www.uil-   %20Powerpoint%20Presentation.ppt#1 29 /30
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