Sometimes inventors come up with an idea for a new product. However, much to their surprise, they discover that someone else already has a patent covering it.
With new products being the result of one’s creative mind and the mind having endless boundaries, one might think that this scenario rarely happens. The reality is that it happens quite often as a consequence of most product innovation being incremental on what is already known and / or a lack of patent searching and due diligence.
The good news is, if the product is a great business opportunity and that time and money have already been invested towards bringing the product to market, there is still room for action for the inventor.
One thing worth considering is whether one or more features of the product can be changed to avoid the patent and allegations of infringement by the patent owner. This is also known as designing around or inventing around the patent.
Some may think that looking at the pictures of the patented product and ensuring that they look different is sufficient. It is not. Looking at the pictures alone is a common mistake and is unfortunately inadequate for designing around a patent with confidence.
Patents have several sections including a description, claims, and pictures. It is the written text of the claims which determines what is covered by the patent and not the pictures alone or the specific examples in the description, which is why it is really important to read the claims.
A simplified patent claim covering a product might be written as follows.
A product comprising:
- feature A;
- feature B;
- feature C; and
- feature D.
In simple terms, commercialisation of your product will infringe claim 1 if your product has every feature A, B, C, and D.
The fact that a product has something extra added, such as feature E, does not avoid infringement.
Omitting one of A, B, C, or D from the product is a very good step towards designing around the patent and avoiding infringement. The more features omitted, the further away from the claim the product will be.
Replacing one of A, B, C, or D with a variation / alteration e.g. A’, B’, C’, or D’ is another design around strategy that may avoid infringement. To increase chances of circumventing the patent, it is recommended to select a variation that has a material effect on the way the product works or was not obvious to the reader when the patent was published. Again, selecting more than one variation if possible to put extra distance between the new product and the patent.
If an you wish to proceed with your intended commercialisation of the unmodified product, you may wish to attempt to cast doubt on the patent’s validity by locating documents that disclose the claimed product with A, B, C, and D and that were published before the patent’s filing date.
Another option worth considering is approaching the patent owner and ask for permission, i.e. a license, to commercialise the product in exchange for a royalty payment.
The above design around suggestions are provided as general guidance only and are not intended to be a substitute for proper legal advice. If you need infringement analysis, design around advice, or help looking for validity-destroying documents, please don’t hesitate to contact us.