In my profession, I frequently come across situations where a company is in the process of developing a machine, for instance, and then finds out that a competitor already has a patent on the technology used in the machine. Sometimes the first machines have even already been sold. What a disappointment. Does this mean that all the work they did was for nothing? Definitely not. In this blog, I explain how to turn this disadvantage into an advantage.
If it turns out that someone else's patent poses a risk then all is not lost. You can go in search of information that shows that the patented innovation is not novel or inventive. That information is referred to as prior art. If there is no convincing prior art then you could still consider a licence. If that is not desirable or possible then there is a very good, perhaps even better solution: the design around.
A design around could lead to a better innovation
In the case of a design around you are looking for a way to modify your innovation so that it falls outside the scope of protection of your competitor's patent. It will initially come as quite a shock that somebody already has a patent, that there is no prior art to challenge that patent and that you will have to modify your innovation. It is really frustrating! In my experience however a design around will often lead to a better innovation.
Let's take a machine that makes a new kind of golf balls as an example. It turned out that someone had already applied for a patent on the technology used in this machine. A brainstorming session with the engineers then led to a design around whereby the production speed of the machine went up and the quality of the golf balls improved. This new technology could then be patented. Thus this setback was turned into something positive.
Patent attorneys are also techies
As a patent attorney, I occasionally have the privilege of sitting in on brainstorming sessions for a design around. I really enjoy them. They tend to be difficult at first because the engineers find it hard to let go of the ideas they initially had for the innovation. It's hard to get out of that rut. Then, at a certain point, they become inspired. One person sets off the other, creating a snowball effect of ideas. This benefits the invention.
When discussing a design around be sure to invite your patent attorney too. Patent attorneys have both legal and technical knowledge thanks to their training, so they can contribute ideas on the technology, while keeping an eye on the scope of protection of the existing patent.
Is it not possible to do this at an earlier stage?
Isn't it a bit late to find out during the development of a machine or even after a machine has been sold that there is an existing patent? It is not always possible to avoid this. After all, someone else may be working on something at the same time as you but submit a patent application before you do. If you are considering bringing a product to market yourself, your patent attorney may first conduct a Freedom To Operate (FTO) analysis. If a patent or patent application already exists, the FTO is often the point at which this becomes clear. So then you can still make adjustments. If you want to know what the competition is up to at an earlier stage, ask your patent attorney to set up a patent watch/patent monitoring. In this case you will be notified when a patent application that might pose a risk is filed.
Don't let a competitor's patent be an obstacle
If you discover early on or at a later stage that another patent poses a risk, don't let this be an obstacle to innovate. See it as an opportunity to improve and strengthen your innovation. If you want help with a design around or have any other questions about patenting, please feel free to contact me. I would be happy to share my thoughts with you.
