By: Mark R. Malek
In this weeks episode of the question that I recently had to field at Zies Widerman & Malek is whether or not it is permissible to design around a patent. The short answer is OF COURSE! How else is there to be progress? How else can inventions get improved? This is the reason why people have come up with the better mouse trap, right – in other words, inventors have constantly improved that which came before them. How else did we evolve from the original Apple computer to this tiny little MacBook Air that I am writing this article on while sitting inside of an airplane?
A simple “yes” to the question obviously is not enough. How much is enough to design around a patent? How much do you have to change? If I hear the “10% rule” one more time, I’m going to hunt down the crazy person that started it, and do some damage. Where did that one come from? I suspect it was on the “internet” and, therefore, it must be true. There is no such thing as the 10% rule. In case you are wondering, this is the rule that several clients have told me about and wanted to know how to calculate 10%. The rule, apparently, is that all you have to do is change your invention by 10% in order to get around someone else’s patent. I have also been informed that the same applies to copyright infringement. Once and for all – THIS IS NOT TRUE. Please do not expect an attorney to go to court with that argument.
When looking at a patent, go to the end. You will notice a little section that is referred to as the claims. The claims of a patent application can be described as the “property boundary” of the patent. For a really good overview of patents, see Gene Quinn’s articles on IPWatchDog.com. The claims are the way that the invention is defined in words. The claims set forth the limitations of an invention, and defines the elements that make up the invention. For example, suppose you have invented a widget. The claims would indicate that the invention is a “widget that comprises elements A, B, C and D arranged in a particular way.” Yes, this is an extraordinarily simplistic way of describing a claim, but it’ll make sense in a second.
If you ask your attorney to determine if your invention reads on the claims of a patent, or if you have successfully defined around the claims of the patent, your patent attorney should set up a claims chart. The claims chart will likely break down the claims in a spreadsheet and try to analyze whether or not your invention includes each and every single element that is listed in the claim for the widget. If your invention is a widget that also includes elements A, B, C and D, arranged in the same way as in the claims of the patent, then you have not designed around it. Suppose, for example, you have replaced element C with element E? Now you are probably onto something. The analysis should not conclude there. You should continue the analysis to make sure that element C cannot be read broadly enough to include element E. This can usually be found in the specification, i.e., the rest of the patent. If there is a sentence in there somewhere that reads something like “those skilled in the art will appreciate that element C is meant to include element E” then you probably have not done enough.
Obviously, I can write about this topic forever, but I promise to put up some follow up articles on designing around a patent – also known as reverse engineering. In short, I hope that you take the following away from this article: It is permissible to design around a patent, but the process is not a simple one. Be very careful in what you are doing and how you are defining your invention.