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Part 7: How To Prevent Design Around

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How to Patent an Idea: A Guide for Beginners

This is the seventh post in my series How to Patent an Idea: A Guide for Beginners. In the previous articles I’ve discussed how to understand patents, common types of claims, protecting your product or method, and many other topics. Hopefully by now you’re feeling a little more informed about the patent claim process. In this article we’ll discuss how to prevent design around.

How Can I Prevent Design Around?

The term “design around” is commonly used when referring to some minor change that allows a competitor to avoid infringing the claims of your patent. Depending on your technology, you may not be able to prevent all design around, however you can make it as hard as possible for your competitors to steal your invention. In exchange for disclosing your innovation to the public, the government will grant you a patent that allows you to sue others for using or selling your invention without first requesting permission. The purpose of the patent law system is to encourage the public disclosure of innovation, not to protect you from competition.

This may seem like a subtle difference, but it is a critical one. Patents and their claims are published so that competitors can learn from your innovation and avoid infringing your claims. The system is designed to encourage your competitors to innovate and market non-infringing products and methods. Honestly, do you care what the patent system is designed to do? Probably not.

The purpose of the inventor and/or patent owner is to use their patent to protect a competitive advantage in the marketplace. From this point of view, your goal is to draft claims that force competitors to spend as much time and money as possible trying get around your patent claims. The worth of a patent depends on the competitive advantage it confers in the marketplace, which depends on how easy it is to design around. If your competitors can essentially copy your invention with a minor tweak to your product or method, then your patent has little value except as marketing tool.

If your competitors are forced to alter the product or method in a way that makes it is difficult for them to compete, then the patent confers a competitive advantage. For example, your competitors may have to spend so much time and money to research their product that they can’t undercut your market price. Alternatively, your competitor may have to alter the product so much that the product cannot successfully compete as its advantages have been diminished.

If your competitors cannot come up with any competing product or method that does not infringe a claim of your patent, then your patent grants you the competitive advantage of a monopoly. When that happens, congratulations, you win!

How Can I Avoid Design Around?

The best way to avoid having a competitor easily design around your claims is to consult with an experienced patent attorney regarding the scope (coverage) of your claims. At Childs Law our clients can count on two highly experienced patent attorneys working together to draft their patent application. If you’d like to schedule a free consultation to discuss how to prevent a competitor from designing around your patent feel free to schedule a complimentary consultation by giving us a call at (832) 621-0353.

Now let’s discuss two important factors in preventing design around – effective communication and focus.

Effective Communication

To understand how to communicate effectively with your patent attorney, you’ll need to understand a few things about legal culture. First – large law firms are billing machines that are designed to make as much money as possible for their partners. They are in the business of selling trust and the illusion of perfect legal services. Selling this image requires a great deal of posturing.

For example, many patent attorneys will go out of their way to avoid admitting that they do not understand your technology as well as you or your inventors. As patent attorneys our job is NOT to know your technology better than you or your inventor. Our job is to guide you, your inventors, and your business safely through the maze of patent law.

1. This knowledge means that you need to spend time considering all of the possible variations in design that your competitors might create.

2. Then you need to ask your patent attorney if your claims would cover that possibility.

Focus

Patent claims are not designed to protect ideas or generalizations. They are designed to grant the owner the exclusive right to market a product or service. The first step in avoiding design around is to visualize as clearly as possible the EXACT product or method that you plan to use or bring to market. Ask your patent attorney if your claims will cover that product or method. Better yet, if you can, take a picture of your product, make a video of the method, or provide drawings or illustration of your product. Ask your patent attorney if your claims will cover it? This step should ensure that your claims cover your intended product or method.

The second step will be to try to envision improvements and manufacturing considerations. The first conception of your invention may not be the best one to take to market. You may find that as soon as you talk with suppliers, industrial manufacturers, your business unit, and others, that the first draft of the invention is not commercially feasible.

Keep visualizing and re-visualizing the exact product or method that you plan to sell or use until it becomes commercially viable. Ask your patent attorney if your claims will cover that commercially viable product or method. This step should ensure that your claims cover the product that you will actually sell.

The third step in avoiding design around is to then picture the exact products or methods that your competitors might develop to compete with you. Ask your patent attorney if your claims can be drafted to cover that product or method too.

The Value of a Patent

The value of a patent usually depends on two factors. First, your innovation must confer a commercial advantage in the marketplace. No customers = no money. Second, the value of the patent will rest on your ability to enforce the patent to exclude others from practicing your invention. This protection is why patents can be your most valuable assets.

A useless patent is one where your innovation provides no advantage in the marketplace, or your competitors can make a minor change and avoid your claims. A moderately valuable patent is one where the claims force your competitors to spend vast amounts of time and money to design around your patent. The very useful patent is one where your competitors are forced to spend so much time and money trying to design around your claims that they are essentially forced to come up with their own invention. In doing so, they may lose most or all of your commercial advantages. The most useful patent gives you are monopoly on a unique product or service. Your patent creates an instant unique sales proposition (USP) for the product or service you want to sell.

Block The Bottle Neck!

I find that the strongest patents are those where the science, the application, and/or regulations severely limit design around. The only paths through are like passes in the mountains. For example, a patent claiming new drug molecules can be very difficult to design around. First, design around is limited because only certain chemical combinations are possible, and their properties are usually difficult to predict. Second, the molecular requirements for drugs are strict, because the body’s drug receptors are highly selective. Third, and most importantly, the Food and Drug Administration (FDA) only approves one molecule at the cost of one to two billion dollars. The only way that competitors can design around an FDA approved drug molecule is to pay their own one to two billion dollars for regulatory approval!

When trying to prevent design around, look for science, the constraints of the application, or regulations that will effectively limit most design around efforts… and then claim the remaining paths.

Find the bottleneck!

Defend the bottleneck!

The next post in my How to Patent an Idea: A Guide for Beginners series will cover “Conclusion.”

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