Product Development
The development of new personal care formulations and raw materials requires a clear understanding of patents and how to avoid infringing a valid patent. This makes the patent attorney a necessary participant in the preliminary meetings related to new product development. If a patent exists that makes in impossible to use a particular raw material, the discussion should turn to a “Design Around”.
Design Around[1]
The phrase “to design around” means to invent an alternative to a patented invention that does not infringe the patent’s claims. The phrase can also refer to the invention itself.
Design-arounds are considered to be one of the benefits of patent law. By providing monopoly rights to inventors in exchange for disclosing how to make and use their inventions, others are given both the information and incentive to invent competitive alternatives that design around the original patent. [2] In the field of vaccines, for example, design-arounds are considered fairly easy. It is often possible to use the original patent as a guide for developing an alternative that does not infringe the original patent. [3]
Design-arounds can be a defense against patent trolls. The amount of license fee that a patent troll can demand is limited by the alternative of the cost of designing around the troll’s patent(s). [4]
In order to defend against design-arounds, inventors often develop a large portfolio of interlocking patents, sometimes called a patent thicket. Thus a competitor will have to design around a large number of patents. [5]
When undertaking a development project, a patent review should be undertaken for a freedom to operate opinion. If there is a problem, a Design Around should be considered that avoids the patent. The result of the Design Around Exercise, if successful may well result in a new patent for the developing party.
References
- https://en.wikipedia.org/wiki/Design_around
- Strandburg, Katherine (2004). “What Does the Public Get?: Experimental Use and the Patent Bargain”. Wisconsin Law Review 2004: 6.
- Kremer, Michael (2001). “Creating Markets for New Vaccines –Part II: Design Issues”. Innovation Policy and the Economy I. Cambridge: MIT Press. p. 93. ISBN 0-262-60041-2.
- Golden, John M. (2007). “‘Patent Trolls’ and Patent Remedies”. Texas Law Review 85: 2111–2161 [p. 2130].
- Rubinfeld, Daniel L.; Maness, Robert (2005). “The Strategic Use of Patents: Implications for Antitrust” (PDF). In Leveque, Francois; Shelanski, Howard. Antitrust, Patents and Copyright: EU and US Perspectives. Northampton: Edward Elgar. pp. 85–102. ISBN 1-84542-603-7.
Intellectual property needs to be protected, in many cases the optimum way to protect the technology is the use of patents. This necessitates the development of a patent strategy.
Patents can be used as either swords or shields, which are either offensive or defensive instruments. As shields, patents can be employed to make it very difficult for competitors to duplicate our products, but there is an other less well known use of patents, that us is as swords. Keeping in mind that patents do not render a freedom to operate, merely a right to keep others from practicing the art, patents that cannot be practiced by an owner often are granted to block the steps of a potential competitor. Simply put, the applicant patents the next improvement in the improvement of the product of another. This patent becomes a “sword” an offensive weapon blocking a pathway to a competitor.
Five Legged Chair
The development of technology in any business needs to be considered an ongoing process rather than a one step process. In other words, once the first development is complete and patented, it will be followed by a next development. The development of new generation improvement is a so called five legged chair. The description comes from the analysis of a very simple example.
Assume a hypothetical patent on a chair. Assume the claims are:
Consider the chair one:
Does chair 1 it infringe Claim 1 and / or claim 2? The answer is yes to both, since it has a plurality of legs and it has four legs (plus one).
Assuming only four legged chairs are know, can chair one be patented as an improvement of the four legged chair? Answer is what does it do that is unexpected? Is it more stable, more comfortable, leas to better posture and less back problems for one that sits in it? The answer now is very fact dependant. If the answer is so difficult for such a simple example, it is far more complicated for the complex compounds and processes in actual commercial use. The strong interaction between the technical and legal groups is required to protect the technology.
Conclusion
The development of new products and technologies is both complicated and expensive. Companies must use all available tools to protect the technology by using the concepts of design around, swords and shields and five legged chairs.
This information is taken with permission from a presentation of Tony O’Lenick in a Society of Cosmetic Chemists patent course. For more information contact tolenick@mindspring.com