When a party is sued for patent infringement, an alternative for avoiding infringement is to develop design around technology not covered by the subject patent. Even if there is no lawsuit, often a company has competitors that make products or offer services that include attributes and features you would like to include in products and services.
As a general rule it is completely proper to take advantage of any aspect of a competitor’s device and include it in your device unless it is protected under the U.S. patent laws. (Other countries also have patent laws that must be considered if manufacture or sales are made in those countries.)
In some cases there may be other intellectual property rights, such as trade secrets, copyright and trademark laws, that must be considered, but these circumstances are rare and easier to avoid than the patented features.
Often the desired feature is NOT protected by patent, meaning you can add that feature to your device as long as you do not create a “look alike” device. Non-patented features are public and available for anyone to use. You may want to consult with patent counsel to help determine that this particular feature is not the subject of a pending patent application, which would cause an important interruption to this plan (see discussion below), but if the feature is a couple years old most likely there will be no pending or issued patent complications.
The next step in taking your competitor’s technology is to consider your device, which now includes the additional feature, and enhance it in some new, useful and non-obvious way. It is best for this new feature to have some market appeal but now you have the basis for seeking a patent on your enhanced device with the additional feature.
Under this plan you can provide your customers a patented enhanced device.
If the competitor device is patented in whole or as it relates to a particularly desired feature, you must determine the date of the patent application directed to the protected feature knowing that patents last for 20 years from the earliest application in the patent family.
You should determine if the patent can be invalidated. Securing an invalidity search and the advice of patent counsel will assist in this evaluation. What you are looking for is a piece of prior art the examiner did not consider during his examination that is directed to the novel feature(s) in the application that were cited by the examiner as the basis for allowance of the application. Invalidity searches are readily available in most technology-based countries.
Once new prior art is located, you must determine the most efficient method to challenge the patent: declaratory relief action for invalidity (assuming a reasonable apprehension), or a request for re-examination (the patent may be fixed in this process). These invalidity activities can be time-consuming and expensive.
The alternative is to identify the oldest patent that covers the desired feature. Analyze the structure of this technology and conceive an enhancement feature that employs the desired feature and offers an enhancement that avoids all patent coverage and has market desirability. File an application for your enhancement of the old technology.
To find a new enhancement, dissect the device into its components and analyze each component to see how current technologies can be used to enhance the device. Typical areas of attention include materials; computer control; display features; ease of use; ease of manufacture; report functions; inclusion of multiple dependent attributes; specific limitations to a desired attribute; and ascetic nonfunctional features.
Once you have sought patent protection on your enhanced version, identify a migration plan for further enhancements and seek sequential patent protection on these continuing developments.
When the competitor’s patent ultimately lapses you will have a family of patents on enhancements, thereby limiting the competitor from making his device with your new market-desirable enhancements.
In addition, you may be able to immediately make, use and sell your enhanced device outside the United States unless the competitor has patent protection in the other country.
This method, in a relatively short period of time, permits you to properly design around and take your competitor’s technology.