Patent Attorney and Founder
Question:
Hello, I’m reaching out for some guidance regarding a business venture I’d like to launch. However, the system I intend to use is currently patented. I wonder if there’s a possibility to tweak the system, perhaps by adjusting certain details like the position of lights or the camera, to avoid infringing on the patent.
Answer:
JD: Great question, and it’s smart of you to be aware of the existing patent. Yes, this happens frequently; it’s called designing around a patent. You can work with an attorney to read through the claims, or you can do it yourself. Go to Google Patents and pull up the patent claims. Don’t focus on the pictures or the 20-30 page written description. Scroll to the bottom and carefully read the numbered set of written claims, starting with the first claim, which is the independent claim.
JD: Usually, the independent claim has several clauses. If you’re considering changing things like lights or cameras to avoid infringement, you need to know that, to be liable for infringement, your product would have to match every single one of the claim limitations. The longer the claim, the better for you, because you only need to omit one element to avoid infringement. This means there are often many ways to creatively design around claims.
JD: However, if the claim is very broad and short, it can be more challenging to design around it. Take a look at the patent and start thinking about how you can adjust your system to avoid infringement.
Matt: When you talk about the patent claims, they’re all basically connected and contingent upon one another. Is there ever a situation where you have an “or” situation within the claims?
JD: Yes, you can have multiple independent claims. This is typical for devices or systems. For instance, claims 1 through 20 might be structured so that claims 1 through 11 pertain to the device, with claim 1 being the independent claim and claims 2 through 11 being dependent on it. Claim 12 might be a new independent claim that covers the method of using the device, rather than the device itself, describing how it is used in combination with other elements or assemblies.