designing around patent
Post on 17-May-2015
618 Views
Preview:
DESCRIPTION
TRANSCRIPT
Designing around patent system
1/30
www.PharmInfopedia.com
2/30
Costs incurred by the participants in the patent system
Opposing objectives
Designing around patent
Fiesto decision and effects
Design around patent- From perspective of competitor
Design around patent- From perspective of patent holder
www.PharmInfopedia.com
Costs to patentee:R&D costsDelayed first sale or disclosureCost of compliance with patent rules andlaws (application fees)Legal feesPotential enforcement/defense costs(litigation)
3/30
www.PharmInfopedia.com
Costs to society:Higher prices for consumers Discourages further research in
areasnewly patented
4/30
www.PharmInfopedia.com
Provides notice to societyChilling effect on competition
5/30
www.PharmInfopedia.com
Patentee seeks to develop broad patent
protection that:
maximizes the opportunity to charge for
monopoly costs; andminimizes the likelihood of a
successfuldesign around.
6/30
www.PharmInfopedia.com
Non-patentee seeks to create a competitive
product:
not burdened with the monopoly costs of the
patentee;that maximizes the likelihood of a
finding ofnoninfringement (or invalidity); and
7/30
www.PharmInfopedia.com
Bypass much of the R&D costsCapture market share
8/30
www.PharmInfopedia.com
Intentional “designing around” of the patent claims is not by
itself a wrong which must be compensated by invocation of
the doctrine of equivalents. Designing around patents is, in
fact, one of the ways in which the patent system works to the
advantage of the public in promoting progress in the useful
art, its constitutional purpose…
9/30
www.PharmInfopedia.com
Often at the junction of prosecution history
estoppel and the doctrine of equivalents.
10/30
www.PharmInfopedia.com
If a claim element was narrowed byamendment, and the claim
amendment wasmade for a reason related to
patentability,then there can be no infringement of
thatclaim under the doctrine of
equivalents.
11/30
www.PharmInfopedia.com
Provides a recipe for designing around for a
competitor.Provides greater challenges for
patent applicants in preventing design around efforts.
12/30
www.PharmInfopedia.com
Simplified designing around strategy in
light of Festo
read the prosecution history to identify
amendments made for patentability reasons;
13/30
www.PharmInfopedia.com
Conservative design around strategiesA) Select a solution from the prior art (ifenforceable patent, then obtain a license,acquire rights)orB) Develop an alternative solution based on
aproblem-oriented approach and obtain acompetent non-infringement opinion.
14/30
www.PharmInfopedia.com
Alternative design around strategy(prior to Festo and possibly if Festo
overturned)
a) focus on the broadest valid claim (identified based on
review of prior art and prosecution history)b) substitute an elementi) one that performs substantially same
function in a substantially different wayii) identified by prosecution history estoppelc) obtain a competent non-infringement
opiniond) adjust practice based on Supreme Court ruling in Festo. 15
/30www.PharmInfopedia.com
Draft applications with eye towards Festo - example
strategies:
A) file with narrower claims to avoid amending during prosecution
B) use one-sided range criteria (avoid double ended ranges)
C) format claims for clear demarcation between elements
D) when forced to amend, add a new element rather than amend an existing element
E) conduct a reasonably thorough art search before filing
F) appeal rather than amend
16/30
www.PharmInfopedia.com
- No missing element possibilities.- No unnecessary estoppel.- No alternative methods/functions
to get to same outcome.
17/30
www.PharmInfopedia.com
File a Strong and Comprehensive Specification Do a Thorough Prior Art Search and Draft
Accordingly Be Careful with Amendment Arguments and
Claim Changes
18/30
www.PharmInfopedia.com
Claim Differences from Prior Art, not Embodiments
Find and Claim THE Invention not Embodiments
Embodiment = What the inventor is using or has made
Invention = All combinations of pieces of the embodiment
that overcome the prior art, claim the differences
19/30
www.PharmInfopedia.com
20/30
Differences:- sloped tail fin - wheels 2-1 versus 1-2 - faster- bent nosecone - wing attach point - tail powered- jets, not props - hold more cargo - wing attach- many wheels on - higher ceiling - new material
www.PharmInfopedia.com
Capture all the Ground you
can that is not Prior Art
21/30
Capture the “Invention Territory”
www.PharmInfopedia.com
Diversify Claims to Cover Invention Territory
22/30
www.PharmInfopedia.com
23/30
www.PharmInfopedia.com
24/30
Avoid Unnecessary Claim Limitations
www.PharmInfopedia.com
Stretch the Invention, Do Advanced Inventing
25/30
www.PharmInfopedia.com
Approach Claims From Different AnglesAn integrated circuit comprising: a first conductive layer; a second conductive layer overlying the first
conductive layer; an original via located between the first and
second conductive layers;
a first overlay layer of the file structure defining a two-dimensional layout of a first conductive layer;
a second overlay layer of the file structure defining a two-dimensional layout of a plurality of vias;
26/30
www.PharmInfopedia.com
Make Sure Claim Limitations are Detectable
Levels of detectability:simple inspection of
product/literaturenon-detectable
27/30
www.PharmInfopedia.com
Write note on Festo decision and effect. (2 marks)
Define design around. (2 marks) Note on opposing objectives of patentee and competitor. (2 marks) Note on Design around patent -from the
perspective of competitor (5 marks) Note on Design around patent- From the
perspective of patentee (5 marks)
28/30
www.PharmInfopedia.com
http://www.mit-forum.co.il/2006events/idea/guy_yonay.pdf http://conferences.utcle.org/law/cle/conferences/archive/
PT05/01.3_Witek_PT05_ses01_revppt.pdf http://www.foley.com/files/tbl_s31Publications/
FileUpload137/1879/nanotechexplosion.pdf http://www.uil-sipo.si/Seminar_licenciranje06/
Rating_Valuation.pdf http://www.uil-sipo.si/Seminar_licenciranje06/
Commercial_use.pdf http://www.intproplaw.com/articles/PatentProcess.pdf http://www.law.unimelb.edu.au/ipria/events/Rubinfeld
%20Powerpoint%20Presentation.ppt#1
29/30
www.PharmInfopedia.com
30www.PharmInfopedia.com
top related