How to Design Around and Avoid Patent Infringement


When a company is in the early stages of product development, a freedom to operate search may reveal potentially problematic patents. To avoid lengthy and expensive patent litigation, the company should at least consider potential modifications to the product’s design avoiding those patents, typically called “design-arounds.”  The first step in avoiding patent infringement is obtaining knowledge of the patents that may be infringed by the product you are designing, which can be accomplished through a freedom to operate search performed by a professional. 

Freedom to Operate Search

A freedom to operate (FTO) search is also known as a patent infringement search, and its predominant purpose is to help you assess the risk of infringing a competitor’s patent.  An experienced patent attorney at an intellectual property-focused law firm can conduct this search and help you in this risk assessment.  An FTO search for utility patents will focus on the claims of other patents, and will assess if your product is infringing those claims.  If your product arguably falls within the scope of the claims of a patent, you are exposed to the risk of litigation.  An FTO search may range in cost from a couple thousand dollars to tens of thousands of dollars, depending on the product and how the results are delivered.  These costs vary depending on the complexity of the product, the amount of work involved in conducting the search, and whether you intend to rely on any resulting opinion as part of your defense should a lawsuit be filed. 

Although an FTO search can help you lessen the risk of patent infringement and subsequent litigation, FTO searches may not be exhaustive, and your product may still expose you to some level of risk even if the FTO opinion states otherwise.  Further, a patent owner may still sue you despite a favorable FTO opinion.  However, FTO searches are a useful tool that can help mitigate the risk of patent infringement and lessen your exposure to potential lawsuits.  

Do Your Research

Once you have obtained a freedom to operate opinion, you are better equipped to design around the patents that you are at risk of infringing.  To design around a utility patent, you should focus on designing around the claims.  Understand and study the claims of the high-risk patents that were identified in the FTO search.  This will enable you to design something similar without legally infringing the patent’s claims.  Designing around those patents reduces the risk of a patent infringement lawsuit and minimizes liability for infringement.  Carefully studying the patent’s specification and file history is also a good idea.  Studying the file history can help you find any arguments or amendments that were made by the applicant in order to get the patent allowed, which can also help you avoid patent infringement. 

The Break Down of a Patent Claim

When you are looking at a patent claim in an effort to design around it, it is important to understand the anatomy of the claim.  A patent claim can include several features.  To avoid patent infringement, your product cannot mirror all of the same features as those covered by the patent claim.  Note that adding one extra feature will not prevent infringement, because your product will still include all of the relevant features of the patent claim.  The more that you are able to alter the features of your product that are similar to the features of the claim, the less of a chance there will be that your product will infringe the patent. 

Room for Action Around the Inventor

In order to alter the similar features of your product to avoid patent infringement, you should begin by identifying ways to differentiate your idea from the features of the patented invention.  Think about exactly what it is that makes your idea novel.  You can then build on your idea and tweak features of your product to improve it over the invention that the patent protects.  Conducting this type of product development after an FTO search has been conducted will best enable you to avoid patent infringement and mitigate the risk of exposing yourself to costly litigation. In fact, designing around existing patents may result in the development of your own innovative designs, which can mature into intellectual property. Consult a professional in the field to see how best to protect your design, as there are several options, and building an IP portfolio is not always a straightforward process.

Experience and expertise are critical in evaluating the risk that your product will infringe another’s patent.  For more information about how to design around and avoid patent infringement, the potential benefits of a freedom to operate search, or patent law in general, get in contact with one of the IP experts at TraskBritt today. 

Article written by Ashley Kennedy