Designing around patent

 Designing around
patent system
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www.PharmInfopedia.com

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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

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)
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Costs to society:
Higher prices for consumers
Discourages further research in areas
newly patented
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Provides notice to society
Chilling effect on competition
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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.
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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
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Bypass much of the R&D costs
Capture market share
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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…
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Often at the junction of prosecution
history
estoppel and the doctrine of
equivalents.
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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.
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Provides a recipe for designing around for a
competitor.
Provides greater challenges for patent
applicants
in preventing design around efforts.
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Simplified designing around strategy in
light of Festo
read the prosecution history to identify
amendments made for patentability
reasons;
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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.
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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.
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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
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- No missing element possibilities.
- No unnecessary estoppel.
- No alternative methods/functions to
get to same outcome.
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 File a Strong and Comprehensive Specification
 Do a Thorough Prior Art Search and Draft Accordingly
 Be Careful with Amendment Arguments and Claim
Changes
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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
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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

Capture all the Ground
you
can that is not Prior Art
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Capture the “Invention Territory”

Diversify Claims to Cover Invention Territory
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Avoid Unnecessary Claim Limitations

Stretch the Invention, Do Advanced Inventing
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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;
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Make Sure Claim Limitations are
Detectable
Levels of detectability:
simple inspection of
product/literature
non-detectable
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 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)
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 http://www.mit-forum.co.il/2006events/idea/guy_yonay.pdf
 http://conferences.utcle.org/law/cle/conferences/archive/PT05/0
1.3_Witek_PT05_ses01_revppt.pdf
 http://www.foley.com/files/tbl_s31Publications/FileUpload137/18
79/nanotechexplosion.pdf
 http://www.uil-
sipo.si/Seminar_licenciranje06/Rating_Valuation.pdf
 http://www.uil-
sipo.si/Seminar_licenciranje06/Commercial_use.pdf
 http://www.intproplaw.com/articles/PatentProcess.pdf
 http://www.law.unimelb.edu.au/ipria/events/Rubinfeld
%20Powerpoint%20Presentation.ppt#1
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Designing around patent

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