How to Design Around an Existing Patent?

Many inventors might relate to the following scenario: A great idea pops into your head, you spend hours thinking about the idea, make drawings, and brainstorm, only to do a Google search to find that someone else has already invented something very similar. This common occurrence however is not the end of your journey to secure patent protection, very often it is just the beginning.

An inventor can go on to obtain patent protection for an invention which improves upon an existing patent by “designing around” the existing patent. Designing around a patent requires that the inventor has a deep understanding of the existing patent, including its file history and the scope of its claims. The ultimate goal when designing around an existing patent is to draft claims which do not conflict with the claims of the existing patent.

There are several key steps to designing around an existing patent. First, with the help of an experienced patent attorney, an inventor should conduct a Freedom to Operate search, which is a type of patent search which helps to “assess the risk of infringing a competitor’s patent.” (1). The goal of this search is to gain a deep understanding of what existing patents exist which might conflict with the invention. Second, it is best practice “to investigate related foreign filings to see if the patent owner made any limiting statements abroad.” (2). Lastly, an inventor should work with a patent attorney to draft claims which do not interfere with the claims of existing patents.

“One common metaphor likens patent claims to landmines. The purpose of a design around is to navigate around those landmines by omitting elements recited in the claims.” (2). Designing around the existing claims requires that you look for gaps (omissions within the claims) that could be filled. Ultimately, the more omissions present in an existing application, the less likely the patent will be to infringe on existing claims.

In conclusion, successfully designing around a patent requires not only a deep understanding of the existing patent landscape but also strong claims which do not conflict with existing patents.

Sources:

1. https://www.traskbritt.com/how-to-design-around-and-avoid-patent-infringement/

2. https://www.patenttrademarkblog.com/how-to-design-around-patents/