Designing Around My Patent

[listenup77]

California. How easy is it to design around a patent? Can a person see my product and then go and add an extra handle or change the type of material used, size or change the shape just a little and then get it patented? Because my concern is that I start trying to pitch my product to larger companies, they like the idea, then get one of their experienced designers and just change the product enough to get their own patent, but it still would do the same thing mine does. Just that my lack of designing skills didn't think of putting a piece in a different place. I know they can probably get a design patent, and pay me for the utility patent, but can they also get a utility patent and become my competitor with a product that does the same thing?

 

[divgradcurl]

How easy is it to design around a patent?

This is entirely dependent on how the patent is written, and what the technology is. Some patents are very easy to design around, and some patents you have to read to figure out how to infringe them in the first place! However, many patents are well written, and provide broad coverage; further, sometimes a patent will cover the only reasonable way to do something, or the only comercially viable way of doing something, given the current state of technology.

The only way your question can be answered is to have a patent practitioner read your issued patent along with the prosecution history of your issued patent, and analyze the patent and the history in light of current case law. Only then can you get a real idea as to how broadly the claims are likely to be interpreted by a court.

Once you know how broad your claims are, then you can see how easy or hard it will be to design around your patent.

Can a person see my product and then go and add an extra handle or change the type of material used, size or change the shape just a little and then get it patented?

In general, it is possible to obtain a patent on a new invention that is an improvement of an existing invention. However, there are two things to remember here.

1. The improvement must be patentable itself -- in other words, the improvement must be useful, novel, and nonobvious, just like any other patent. Simply changing the shape or adding unecessary features will not create a new invention, unles sit meets the useful/novel/nonobvious standard itself;

2. Even if a patent is issued on an invention that is an improvement of an existing invention, the improvement will almost certainly infringe the patent on the underlying invention. To put things in a very simple way, if you have a patent on the combination A+B, and someone else patents the nonobvious improvement A+B+C, that second person cannot make A+B+C without making A+B, which means that the second person must obtain a license from you before "practicing" their own invention, or face an infringement action from you.

So it is possible for someone to patent an improvement of your patent -- but unless the improvement designs around the limitations in your patent, the improved invention will be infringing your patent, and they will need to take a license.

Over all, everything is really going to be determined by the quality of your original patent. If your patent was drafted by a skilled patent practitioner, then your patent may well have broad coverage that is difficult to design around, making it a very strong patent. On the other hand, an inexperienced practitioner, or limitations due to prior existing art, may significantly limit the breadth of the coverage of your patent, potentially making your patent easier to design around. Without doing a thorough review of both the patent and the prosecution history of the patent, it is impossible to tell you how strong or weak your patent might be.

If you are not working with a patent attorney or agent, now might be a good time to get one involved.

 

[listenup77]

I know I can count on a good and quick respond from you, I see it all the time in this forum, thanks. I do have one more question in regards to something you stated in your reply. The "prosecution history of the patent", what does that mean? Is it the initial provisional patent application sent or something else?

 

[divgradcurl]

I know I can count on a good and quick respond from you, I see it all the time in this forum, thanks. I do have one more question in regards to something you stated in your reply. The "prosecution history of the patent", what does that mean? Is it the initial provisional patent application sent or something else?

The "prosecution history" is a record of all correspondence between the applicant (or the applicant's agent or attorney) and the patent office. The prosecution history becomes a publicly-accessible record once the patent issues. Because it is a complete set of all correspondence, it will include the original provisional application (if any), the original application, and any amendments, office actions, etc., that are made during the prosecution of the patent.

BTW, the prosecution history is also referred to as the "file wrapper."

The prosecution history is very important to properly interpret the claims. The claims, as you may know, are what the patent actually is -- the specification (the written description and any preferred embodiments) merely "informs" the claims, or provides some evidence of what the claims are meant to cover, without actually limiting the claims themselves (except in limited circumstances). For that reason, when determining the scope of the claims, the specification can provide some insight, but the claims are not generally limited to what is written in the specification -- usually they are broader than the specification.

However, there may be information in the prosecution history that CAN narrow or limit the claims. For example, if the patent examiner rejects a claim, and the applicant limits the claim in some way to get around the examiner's rejection, the applicant cannot later claim that the patent covers the thing that was given up to get the patent issued. This is called "prosecution history estoppel," and is a limit on the breadth of the claims. Further, amendments which narrow claims can also narrow the scope of the patent. These types of limiting arguments and narrowing amendments exist in the history of virtually every patent issued, so when determining just how broad claims in a patent might be, it is vital to carefully review the prosecution history of the patent. Without such a review, any attempt to determine the actual scope of the claims will likely result in an overbroad reading of the claims.

So, if you were issued a patent, and someone wanted to "design around" your invention, they would read the patent, and then read the prosecution history -- only then, with a sound understanding of what the patent actually covers, limited by what the applicant "gave up" during the prosecution history of the patent, can that someone determine just how much they need to change their product to get around your patent.

Conversely, if you were going to sue someone for patent infringement, you would still need to look at the prosecution history to try and determine where the court might limit and narrow your claims -- it is possible for someone to be infringing the patent under a literal reading of the claims, only to find out that infringement doesn't exist when the claims are limited by what was found in the prosecution history.

As you can probably tell, this can get to be complicated stuff, and usually there is no "right" answer to any of these questions. This is also why I suggested working with an experienced attorney or agent to get your patent issued -- the less back-and-forth correspondence between you (or your agent or attorney) and the patent office, the less likely it is that you will deliberately or inadvertently limit the scope of your claims beyond what is absolutely necessary to get the patent issued.

 

[listenup77]

Divgradcurl, thanks for your quick and detailed reply. I had a law firm do a search for my product (called Litman Law, in VA.) and I'm now getting ready to have them do a provisional patent application for me. The problem is that they are good, but expensive. I really don't want to spend too much money on getting some protect for my idea (only for one year), while I test prototypes and get feedback from others who try it. I am willing and ready to spend the big bucks on getting the patent (non-provisional app.), but that's after I have other try the product first. With the procecution history being so important and put under the microscope, I'm thinking of not filing the provisional patent application on my own; instead paying the high amount to have a lawyer or agent to do the provisional for me (even if I've been told the provisional is easy to do). Don't want some big company later coming back and breaking apart my average drawings and average specification or description. Thanks for your help.

 

[divgradcurl]

Divgradcurl, thanks for your quick and detailed reply. I had a law firm do a search for my product (called Litman Law, in VA.) and I'm now getting ready to have them do a provisional patent application for me. The problem is that they are good, but expensive. I really don't want to spend too much money on getting some protect for my idea (only for one year), while I test prototypes and get feedback from others who try it. I am willing and ready to spend the big bucks on getting the patent (non-provisional app.), but that's after I have other try the product first. With the procecution history being so important and put under the microscope, I'm thinking of not filing the provisional patent application on my own; instead paying the high amount to have a lawyer or agent to do the provisional for me (even if I've been told the provisional is easy to do). Don't want some big company later coming back and breaking apart my average drawings and average specification or description. Thanks for your help.

Having the provisional professionally done is a good idea if you really want to protect your patent. A lot of people tend to think that the provisional is pretty simple, almost a "throwaway," and they tend to provide just the minimum information that the patent office requires to issue a provisional. However, in our office, when a client of ours wants a provisional application done (for whatever reason), we generally prepare the entire utility nonprovisional application, and file what is essentially a nonprovisional application as the provisional.

There are two main reasons for this. First, and most importantly, the protection you get with a provisional -- which is essentially only a filing date -- only covers what is disclosed in the provisional. If you disclose new matter in the nonprovisional application, the new matter does NOT get the benefit of the earlier filing date. Therefore, to get the best possible protection out of a provisional, you need to really write a complete specification. And since it is hard to write a complete specifications without the claims, its best to write the claims first anyway, and at that point, you basically have the nonprovisional application... If you write a quick and dirty specification just to get the provisional filed, you could find yourself limited when you file the nonprovisional application:

1. If the specification doesn't disclose everything you invention covers, you will have to ammend the disclosure, and any new material added will not get the benefit of the eariler priority date (which means someone else could have come up with it and filed their own application in the meantime, and then you would be sunk. Further, this could also negate the "absolute novelty" requirements for foreign filing in some cases).

2. If the specification doesn't disclose everything your invention covers and you decide not to ammend the specification, when you go to write your claims, they will either have to be narrowed so that the specification does cover them (in which case they may be too narrow to be of any use) or they will be rejected for lack of enablement under 35 USC 112, and then you'll HAVE to amend the specification or give up the claims.

In other words, all kinds of bad stuff happens if you don't write the claims and the specification together -- and therefore, even though the patent office doesn't require claims when filing a provisional, in many cases it is a terrible idea to not have the claims prepared with the provisional. And since drafting the claims is usually the expensive part, provisionals are not always cheap.

Another reason to write claims even for a provisional is so that you can include claims with a provisional. The law in this area is unsettled and unclear, but potentially a foreign patent office would be free to reject a priority date based on a U.S. provisional application that had no claims filed with it. If you don't plan on filing foreign applications this may not be a big deal, but if you do plan to (or want to leave the option open), this may become an issue for you.

The one place you can save some bucks is on drawings -- you need to have as complete a set as possible, of course, and certainly need to include anything referenced by the specification, but filing "informal" (or even hand-drawn) drawings with a provisional is usually not a big deal, and we often file infromal drawings even with nonprovisional applications, and amend the application later with the formal drawings.

 

[listenup77]

Thanks again, I am conviced that patent agent or lawyer is needed at all steps of filing for a provisional or non-provisional application. If the product is good, and I know it is, then the monetary sacrifice must be made with the provisional. Even thought an international search was done by a law firm, I just hope I don't find out later, that there was an unpublished provisional application with my same idea filed earlier (then I lose all that money/fees). Thanks again, Divgradcurl.