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Designing around patents

In the Industry | November 27, 2023 | By:

Attorneys from the firm of Womble Bond Dickinson (US) LLP, discussed the importance of patents for innovators in their presentation at ATA’s Expo 2023, sharing key points to help inventors protect their innovations. Cory Schug specializes in patent procurement and management, and Jack Hicks is a textile patent expert.

“Every patent is a new combination, a new perspective of old things,” Hicks says, with innovators able to see farther by “standing on the shoulders of giants.” The danger is that using other’s past accomplishments could be illegal, depending on the rights of the “giant” you’re standing on, he says. So, one challenge is to determine what is protected by law, and what is not. 

The United States has a first-to-file system, and an inventor has one year to file to protect an invention. The purpose of the patent system is to disclose what you’re doing to the public. “But it’s an exchange,” he says. “The government allows you to exclude others for 20 years. So, you don’t have to hide it.”

The reason to file a patent is that it discourages competitors from getting into your space, it discourages unlawful competitors, and it also gives you, as the inventor, the option to license out your invention. 

An important part of a patent is the claims, which are found on the last page of a patent document. “This is the fence,” he says. “This is what they can exclude you from doing.”

So, what do you do when you want a patent but others block you? The answer: conduct a patent clearance search to determine a freedom-to-operate. “This is how you determine which patents could affect your invention,” he says. Some patents may have expired because the owner didn’t pay the maintenance fees. “This happens a lot, in some cases, because the patent owners don’t need the patent for very long,” he adds. 

Shug noted that it’s “better to be different in more than one specific way, but there could be a number of possibilities for any one claim that would makes a new design different enough to avoid infringement. “In fact, you might be able to put up your own fence and get protection yourself,” he says. 

Inventors could also investigate the validity of an existing patent. “Did patentee disclose the invention prior to filing patent application? If so, that patent may not be valid,” he says. Also prior art may show that a patent is not novel or nonobvious, which could also invalidate the patent. 

It may also be possible – and advantageous – for an inventor to negotiate a license or purchase the other’s patent. “You could even buy the company,” Hicks says. “The expensive way to remove the obstacle, but it could also offer larger benefits in the future.”

It’s also possible to just go into competition with a product that is similar and let the customer decide. However, “We like innovation,” Hicks says. Patents provide an incentive for an innovator to come up with something new and presumably better. “Patents discourage blatant copying and encourage further innovating,” he adds.  

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