To get around a patent, you need to focus on the claims of the patent. They define what is and isn’t protected by the patent. You also need to find all of the related patents. You may have only found one patent within a portfolio of patents. You need to avoid all of the independent claims in all of the related patents. Otherwise, you’re still liable for patent infringement.
Why do you need to focus on the claims to design around a patent?
The scope of protection is defined by the claims. As such, the focus of the design around effort is on the claims.
More particularly, it’s the independent claims that are the focus of our attention. By not including any one aspect in each of the independent claim(s) in your product, you get around that one patent. You avoid literal patent infringement.
However, you need to see if there are other related patents. You may have only found one patent in a portfolio of patents. You need to avoid infringement for each of the independent claims of each of the related patents that you find. If you infringe even one claim of one patent within the portfolio, you are liable for patent infringement. You need to make sure that your design around works for all of the independent claims of all of the patents.
How do you locate the independent claims of a patent?
The independent claims are located at the end of the patent. It typically starts with the phrase “I claim,” “We claim,” or “What is claimed is.” Thereafter, there’s a series of numbered sentences. Below is a snippet of a sample claim set.
Independent claims are those claims which do not refer to another claim. Claim 1 is always an independent claim. As you can see, claim 1 does not refer to any other claim.
Most of the time, claim 2 is a dependent claim. The dependent claim refers to claim 1. Don’t worry about any of the dependent claims. They are more narrow compared to independent claims. If you avoid infringement of a dependent claim, you avoid infringement of its independent claim. A patent may have more than one independent claim. You need to locate all of the independent claims and determine whether you are infringing on any one of those independent claims.
How do you locate all of the patents related to the patent?
You also need to locate all of the patents related to the patent that you found. Go to www.patentcenter.uspto.gov. Enter the patent number in the search field. On the left-hand side, click on the Continuity link. Here, you’ll find all of the patents related to the patent you initially identified.
For each of the patents, identify all of the independent claims.
How do you design around a claim of a patent?
You design around a claim of a patent by excluding any one feature in the claim from your product.
For example, you can make your product out of steel if the claim requires aluminum. You can make your product 5 inches tall if the claim requires that the product be no more than 4.99 inches tall. In these examples, you avoid literal infringement of the independent claim. You also avoid infringement of all of the dependent claims.
However, your job is not yet done. You can still infringe the claim under the Doctrine of Equivalents (a.k.a., DOE). If the difference between the independent claim and your product is insubstantial, then even if you’re not literally infringing on the claim you’re still infringing on the claim under the Doctrine of Equivalents. The trick is finding out if the difference between your product and the independent claim is insubstantial.
One way to find out if your change is substantial is by reading through the written communication between the patent owner and the examiner. You can locate these communications in the Patent Center. On the left-hand side click on the Documents link.
During the examination, most patent applications are rejected, and the patent owner would have made arguments characterizing the prior art and its invention. So, when the patent owner argues that their invention must be aluminum, they’ve narrowed the scope of their patent and cannot reclaim other types of materials under the Doctrine of Equivalents.
You need to do this for each independent claim of each related patent. Congratulations, you’ve gotten around the patent. But, don’t be so confident. You should hire a patent attorney to confirm your understanding.
You can read a detailed explanation of how to avoid patent infringement in my other articles.
- Basic Principles: How to avoid patent infringement?
- Basic claim analysis principles: Avoiding patent infringement?
If you need help getting around a patent, I invite you to schedule a consultation.