The article was written in collaboration with Ran Kamil, the Senior Attorney and Sharone Godesh, the Head of Patent Department & Patent Attorney at Soroker Agmon Nordman, Advocates & Patent Attorneys.
Hitting the Patent Wall
Often, there comes a time during the development of a new product, when a prior-art search reveals that someone obtained a patent for an aspect of the product and the development process hits the patent wall. In such cases, the developer has numerous options: abandoning the product altogether, obtaining a license from the patent holder, applying to revoke or cancel the patent, purchasing the patent, launching the product anyway, and risking being sued for patent infringement. These options, however, are disadvantageous due to high costs and the requirement to reveal information regarding the development of the new product prior to its launch.
Going Around the Wall
Another way around such a problem is by applying the development process known as "design around". This process entails harnessing the inventive thought that brought the developer to hit the patent wall, to find another solution to the same problem. A new solution would be sufficiently different to avoid falling into the claims of the patent, thereby circumventing that patent. This process is often easier said than done.
Not Going Around in Circles
Patent laws do very little to define the difference between a product and the invention claimed within the patent that will be enough to avoid infringement. Courts around the world repeatedly ruled this as being not quantifiable and must be decided on a case-by-case basis, usually after lengthy and costly trials. Judicial doctrines such as “equivalents” and “variants” have been developed to ascertain whether an allegedly infringing product genuinely employs a different technological solution than the one covered by the patent, or whether the product utilizes the essence of the patent-protected invention, with changes that are insignificant or merely “cosmetic.” Whereas engineers and developers can easily understand the need to design a product that is built and functions differently from a competitor’s product as they have a reference of what is in existence, it is often insufficient to avoid patent infringement. It is because patents usually cover more than one embodiment of the invention and thus include more than the description of a specific product. Therefore, to successfully design around a patent, it is recommended to have the design and development team work together with professionals versed in reading, understanding, and interpreting patents both technically and legally.
In one case, the client’s competitor had a patent-protected product, which included two components pushed away from one another by a spring. In an attempt to design the client’s product around that patent, the client’s engineers suggested using some rubber element instead of a spring. Luckily for the client, he had sought clearance (“freedom to operate”) opinion from his legal advisors. Upon inspection of the patent itself, it was revealed that while the description of the invention’s embodiment in the patent indeed described utilizing a spring, the claims of that patent were phrased to cover any elastic material or substance. Understanding the patent’s claims as well as their limits (i.e., the substance requirement), gave way to a solution of not using any material or substance at all, but instead relying on the repelling force of magnets to push the two components away from one another. That alone would not suffice to avoid the patent claims, as, under the doctrine of equivalents, it is not enough to substitute one element for another. Yet, in that case, the use of magnets had the extra benefit of saving the need for a room for a spring or a substance between the two components. Thus, the variation between the client’s product and the competitor’s patent was more than a mere equivalent.
The Interdisciplinary Approach
The above example illustrates the importance of an interdisciplinary approach to designing-around a patent and the benefit of consulting with legal and patent experts during the design-around process. Having the patent in question well studied by patent professionals who can “translate” its claims to the engineers and developers can save a lot of trial and error as well as much more costly infringement litigation.