Design around refers to the efforts by a competitor to implement changes in their product to avoid infringement of another’s patent. In particular, a patent attorney will review the claims of the patent at issue.
How do you come up with a design around option?
To come up with a design around option, a patent attorney should find other related patents, read the patent in the patent portfolio and the file histories of the patent in the patent portfolio. When you read through all of the documents, you are looking for arguments presented by the inventor describing the invention as to what it is not or limiting a definition of a word used in the claims. In that case, the claims do not cover those disclaimed features.
How to find other related patents?
Patents can be related by claim of priority or by subject matter. If they are related by claim of priority, then there will be a chain of priority in the Patent Center. If the patents are related by subject matter, the related patents may be much harder to find depending on the size of the entire patent portfolio of the patent owner.
Steps to finding patents related by a claim of priority.
Related patents can be found by reviewing the continuity tab in the Patent Center. If you don’t have an account with the patent office, you need one to access the Patent Center. It’s free. So, if you are serious, open a Patent Center account.
Once you enter the Patent Center, enter the patent application number or patent number in the search bar. You will be led to the summary info for the patent. At the top, there will be a continuity tab. You will need to click through the continuity tab to find all of the patents related by a claim of priority.
Steps to finding patents related by subject matter
Patents that are related by subject matter and not by claim of priority may be difficult to find. If the entire patent portfolio of the patent owner is large, it may be impossible to find related patents.
Step 1: Go to www.freepatentsonline.com.
Step 2: Click down arrow next to search button, and select Expert Search.
Step 3: Enter AN/”[enter patent owner’s name’].
Step 4: Select the appropriate databases (e.g., US Patents, US Patent Applications).
Step 5: Click search button.
Step 6: If there are only a few patent documents, review them all. If there so many patent documents that you can’t review them manually, then enter in additional search terms to narrow the search. For example, enter search terms related to the technology.
Step 7: Review all hits and identify the relevant patent documents for review later on.
How to efficiently read the patents in the patent portfolio?
To efficiently read through a patent, start from the detailed description first and start reading until you understand the organization of the patent document.
How to download and efficiently read the file histories in the patent portfolio?
The file history of a patent is the correspondence between the examiner and the inventor. During the back and forth arguments, the inventor may have made certain statements which limit the claims. For example, the inventor may have argued that vertical means anything within plus or minus 1 degree. Well, if that is the case, you can avoid infringement by aligning the part outside of the plus or minus one degree range.
Step 1: Go to the Patent Center.
Step 2: Enter the patent number.
Step 3: Select the Image File Wrapper Tab.
Step 4: Select all documents and download as a pdf.
Step 5: Read through all of the responses from the inventor. You should be able to understand enough of the context without reading the office action.
Step 6: If needed, read through select portions of the office actions.