Patent infringement is a serious concern for companies engaged in product development and innovation. The realization of potential infringement can occur at various stages of the development process, with earlier detection providing more flexibility for design teams to mitigate risks while maintaining competitive advantage. Unfortunately, infringement issues are often discovered in later stages, leading to challenging situations with limited options.
Understanding patent infringement
Patent infringement occurs when a product or process incorporates all elements of a patented invention without permission from the patent holder. This situation can arise due to various factors, including:
- Insufficient patent searches during the early stages of product development
- Misinterpretation of existing patent claims
- Parallel development of similar technologies
When faced with potential infringement, companies typically have three main options:
- Obtain a license from the patent holder
- Investigate the possibility of invalidating the patent
- Change the design of the product to avoid infringement
Each option comes with its own set of considerations and potential costs.
Licensing
Pursuing a license involves negotiating with the patent holder for permission to use the patented technology. Key questions to consider include:
- Is the patent holder willing to grant a license?
- What would be the cost of the license fee?
- How would dependence on a license affect the company’s competitive advantage?
- When is the appropriate time to approach the patent holder for licensing discussions?
Licensing can be a viable option if the terms are reasonable and do not significantly impact the company’s profitability or market position. However, it’s important to carefully assess the long-term implications of relying on a competitor’s intellectual property.
Patent invalidation
Investigating the possibility of invalidating the patent involves searching for prior art or other evidence that could challenge the patent’s validity. Key considerations include:
- What is the likelihood of finding relevant prior art capable of invalidating the patent?
- What are the costs associated with conducting a thorough prior art search?
- What are the expenses involved in pursuing invalidation through various jurisdictions?
- Is there a possibility that the patent holder will withdraw their claims when presented with strong prior art evidence?
While patent invalidation can be a powerful strategy, it often requires significant time and resources. Companies must weigh the potential benefits against the costs and uncertainties involved in this approach.
Design changes and workarounds
Changing the design of the product to avoid infringement is often the most practical and cost-effective solution, especially when detected early in the development process. However, implementing design changes comes with its own set of challenges and requirements:
- The new design must avoid infringement of the identified patent and ensure freedom to operate without infringing other patents.
- The product’s performance should not be negatively affected by the changes.
- The cost of the product should not significantly increase.
- The changes should be implementable quickly to minimize delays in product launch.
- The overall cost of implementing the changes should be as low as possible.
It’s crucial for management teams to maintain strategic focus when faced with potential infringement. The primary goal should always be to serve customer needs and generate a competitive advantage. Design changes should be approached with this mindset, prioritizing the demands listed above.
Example of design changes to avoid infringement
Any technology serves a primary useful function, secondary useful functions or minimises a harmful function. To take appropriate action towards a design change that avoids infringement, it is essential to understand these functions and the attributes of the technology so that the change can maintain performance at minimum cost. The example below is an illustration of some of the thinking processes in finding a good solution to work around patent claims.
Material composition – EP2708578B1
The example chosen represents a relatively simple claim of a material composition for a plastics polymer-based bearing material.
There are potentially six elements (A to F) in this claim that can be substituted or eliminated and to avoid falling into the claim.
Which one or more of these can be “attacked” depends on your product and the fundamental properties that you need to maintain, the fundamental structure that is non-negotiable. Thus, we can consider claim elements are belonging to two categories:
a) Unchangeable characteristics, and
b) candidates for change.
The key to an effective solution for inventing around is segmentation of every element, and an open mind to hidden assumptions. In this example, a composition expressed as %vol refers a material class “distributed throughout the matrix”. Figure one of this patent also shows layers of the backing (1) for example steel, of the bearing lining (2) for example a layer comprising an aluminium-based alloy, and a plastics polymer-based overlay layer (3) according to the present invention. Layer 3 is shown as a homogeneous layer.
Once we surface this assumption and we articulate it clearly, we can then ask the simple question “Does the layer need to be homogeneous?”. If the layer thickness is sufficient, it may then become obvious that not only is not necessary to have a homogeneous layer but it may be beneficial to have a graduation in composition from top surface to bottom surface. Thus, graduation may allow us to have an overall composition that escapes the constraints of the claim without sacrificing performance. For example, metal powder could be beyond 15% or silane below 4.8% etc.
It’s important to recognize that initial directions are not complete solutions but rather starting points for exploration. Each direction must be further developed and evaluated for its potential impact on performance and cost.
Only through careful assessment and refinement can initial directions be transformed into viable solutions that effectively work around patent claims while meeting the product’s performance and cost requirements.
