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“Can a licensee work around my patent?”

Most amateur inventors have the same dream:  “Now that I have a patent on my one-handed cocktail party plate, I will arrange a meeting with Solo, license it to them so they can make and sell it, and wait by the mailbox for my royalty checks!”

Then, ten minutes later, most inventors have the same nightmare:  “Uh-oh.  What if Solo likes the idea so much that they just change it up a little bit and ‘work around’ my patent so the license is no longer required?”

What exactly does it mean to “work around” a patent?

A patent is defined by its claims.  Your patents will usually have 10 – 20 claims.  Each claim provides an alternative definition of the invention.  Example (you’ll pardon my colloquial claim language):

“Claim 1:  I claim a plastic plate / cup combination, comprising (a) a plastic plate, (b) a plastic cup holder molded into the center of the plate , and (c) a plastic cup that fits into the cup holder.”  (So that a party-goer can walk around a cocktail party holding his food and drink all with one hand, freeing the other hand for handshakes, grabbing more food, or opening doors.  Brilliant!)

If Solo wants to “work around” this patent, the way I see it, they have three options:  they can add something to it, they can remove something, or they can modify something.

Option 1:  The add-on.

Example:  Solo makes a product that is just like yours, but they add (d) a lid on the cup.

Good news.  This product still infringes your patent because it has everything in your claim!  You don’t need to envision everything that competitors could add on.  They are prohibited from making a product that has all of your claimed elements, no matter what else is on it.

A variation of the add-on is the “special case”.  For instance, Solo might make their product out of polypropylene (PP) plastic, which you didn’t specify.  But this is really just “adding” a detail.  If it’s a combination plastic plate / cup holder / cup, it still infringes your patent and would require a license.  This is still true even if Solo gets a new patent on their own device!

Option 2:  The removal. 

Example:  Solo makes a device comprising (a) A plastic plate and (b) a plastic cup holder molded into the center of the plate, but without the plastic cup to go in the holder.

In this case, they are no longer infringing your patent because their product does not have all the required elements of your claim.  They are free and clear to make this device without licensing it from you, because you haven’t claimed ownership of this broader invention.

How do we respond to this?  Competition!  Solo isn’t the only plastics company in the world!  You’re still free to pursue Glad or Tupperware and go into competition against Solo.  Therefore, you have to agree that Solo does not have an incentive to do this if it believes in your product.  Solo would realize that your product is incomplete without a cup, and would prefer to sell the more convenient full-kit version.

You potentially could have prevented this removal problem with a broader claim that had features (a) and (b) only.  However, it would have been harder to get a patent on that broader invention.

Option 3:  The tweak. 

Example:  Solo makes a product with (a) A plastic plate, (b’) A cup holder molded into the rim of the plate (not the center), and (c) a plastic cup to go into the cup holder.  Solo will be able to do this free and clear, because your claims specified that the cup holder must be situated at the center of the plate.  It’s like Solo has “removed” the detail that the cup holder must be centered.

So what’s the solution to this scenario?  I hope you recognize that you and I are to blame, for writing an overly-specific claim.  It’s not too hard to avoid this situation by improving your own claim to define (b) as:  “a cup holder molded into the plate,” without specifying where in the plate.  (By now, you’re probably recognizing that patents are really tricky for low-tech inventions.)

If it’s any further consolation, Solo would not be able to get their own patent for add-ons or tweaks to your invention if they were minor, obvious changes.  In that case, you’d be free to adopt their improvements when you take your product to Glad and try competing against Solo.

If Solo makes a major change (a bamboo serving tray with 12 cup holders and 12 cups) then they might be able to get their own patent.  But hey, they are perfectly entitled to do so if they thought of this particular improvement before you did.  That would still have no effect on your ability to make / sell / license your own patented product.  You should still be able to anticipate this kind of tweak with smart claim language.  You could have claimed (a) A serving platter with (b) at least one cup holder fashioned into the platter and (c) one cup for each cup holder.  Of course, this has its limits.  You could not broaden your claims so far as (a) A first object and (b) a second object that goes into the first object.

The moral of this story is that your patented invention is defined by words, not by products, prototypes, drawings, or intentions.  It’s up to you and me to claim your invention wisely by following these principles:

  1. Claim only the features that are indispensable to your invention, so that if a competitor takes any one of them away, their version will lose value.
  2. Try to anticipate how competitors might make slight variations of your product.
  3. Define your indispensable features (from step 1) abstractly enough to cover the variations (in step 2).  Also remember that we get a chance to write numerous alternative claims.
  4. Accept the fact that you can’t keep others from inventing.  But remember that even if someone improves your product, it still might depend on yours and require a license from you — and you might even be able to use their improvements!
  5. Leave the claim language up to me!  I’m biased, but no, really.  Claims are legalese.  It’s hard to get them just right, and inventors shoot themselves in the foot by writing bad ones.

By the way, I have to be straight with you.  99% of the time, you’ll have the opposite problem.  The company won’t believe in your product and won’t bother making its own version.  Nobody will care about your baby like you do.  Keep pitching!

 

 

 

Patentability – the “Dennis the Designer” standard

Is your product, or your idea for a product, patentable?  Not every idea is.  Getting a patent requires us to jump through four legal hoops.  By name and number, they are (101) Statutory subject matter, (102) Novelty, (103) Non-obviousness, and (112) Enablement.  For purposes of today’s post, I want to discuss the 103 and 112 issues as opposite ends of a spectrum.  I have come up with a nice role-playing scenario that will help you assess your likelihood of patentability.

103.  Non-obviousness

Your invention can be patented only if it is “non-obvious.”  This means, legally, that it cannot be a simple combination of previously existing prior art that would be obvious to a person of ordinary skill in making similar products, if he had knowledge of all prior art at the time the invention was made.  In other words, your invention must involve something new and / or improved over previously existing ideas, and even simple combinations of those ideas.  You could accomplish this by adding, removing, modifying, or combining features of previous inventions, especially in ways that give rise to “unexpected results”.

Obviousness is (obviously) related to the complexity of the invention.  Simply combining two unrelated ideas into a single product (say, a “blender lamp”) is usually considered obvious.  A non-obvious invention might  combine two related ideas with synergy (a Breathalyzer car key), three or more elements (a blender lamp clock), or two elements that nobody thought could be combined (square wheels).  The more specifically your product is defined, the more unique and non-obvious (and hence patentable) it is, but the harder it is to protect.

The simpler your invention is, the more obviousness becomes an issue.  Many simple inventions end up being so narrowly defined that it does not justify the cost of the patent procedure.

112.  Enablement

You must be able to describe not only what your invention does, but how it does it.  An unsupported idea about an invention’s purpose is not enough to earn a patent.  We need to disclose enough details to enable someone who is skilled in the art of making similar products to bring your plans into practice.  The more high-tech your invention is, the more enablement becomes an issue.  It is very easy to fully enable a designer to make a spatula.  It takes much more work to enable the design of a complex app or something with many moving parts.  The bar would be extremely high for “revolutionary” or “magic” products like Star Trek transporters or mind-reading helmets.  The ideal inventions are those right at the outer envelope of current technology.

The “Dennis the Designer” test

To summarize patentability, think of your target audience as Dennis the Designer.  He is a skilled worker in your field of art.  Which conversation are you having with Dennis?

Take 1

You:  “Dennis, please build me a device (or app) that does ______________________”

(summarize the purpose of your invention in one sentence).

Dennis:  “No problem; I have just the solution for that.”

Problem:  Oops, your invention is too obvious and fails under 103.

Take 2

You:  “Dennis, please build me a device (or app) that does ______________________”

(summarize the purpose of your invention in one sentence).

Dennis:  “Wow, that would be a challenge.  I wouldn’t know how to accomplish that.  Can you give me some more details about how it works?”

You:  (Provide your specification)

Dennis:  “I don’t know, that sounds pretty vague and I’m still not sure how I’d put that together.  I think I’d have to do a lot of experimentation.”

Problem:  Oops, you have not yet properly enabled your invention, and it fails under 112.

Take 3

You:  “Dennis, please build me a device (or app) that does ____________________________”

(summarize the purpose of your invention in one sentence).

Dennis:  “Wow, that would be a challenge.  I wouldn’t know how to accomplish that.  Can you give me some more details about how it works?”

You:  (Provide your specification)

Dennis:  “Oh wow, that’s a great way to achieve your solution!  I’ll put one together right away.”

Congratulations!  Your invention is patentable!

(Well, assuming that you pass the 101 and 102 tests).  It’s never simple.  When in doubt, call me and ask!