designing around patent

Designing around patent system

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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 costsDelayed first sale or disclosureCost of compliance with patent rules andlaws (application fees)Legal feesPotential enforcement/defense costs(litigation)

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Costs to society:Higher prices for consumers Discourages further research in

areasnewly patented

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Provides notice to societyChilling effect on competition

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Patentee seeks to develop broad patent

protection that:

maximizes the opportunity to charge for

monopoly costs; andminimizes the likelihood of a

successfuldesign 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 ofnoninfringement (or invalidity); and

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Bypass much of the R&D costsCapture 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 byamendment, and the claim

amendment wasmade for a reason related to

patentability,then there can be no infringement of

thatclaim 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 strategiesA) Select a solution from the prior art (ifenforceable patent, then obtain a license,acquire rights)orB) Develop an alternative solution based on

aproblem-oriented approach and obtain acompetent 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 elementi) one that performs substantially same

function in a substantially different wayii) identified by prosecution history estoppelc) obtain a competent non-infringement

opiniond) adjust practice based on Supreme Court ruling in Festo. 15

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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 AnglesAn 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/literaturenon-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/

PT05/01.3_Witek_PT05_ses01_revppt.pdf http://www.foley.com/files/tbl_s31Publications/

FileUpload137/1879/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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http://www.mit-forum.co.il/2006events/idea/guy_yonay.pdf

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