3 strategies to avoid patent infringement and when to use them

Developing new and innovative products that give genuine benefits to users can be an expensive process. Patents are a great way for you to protect your investment in new product design and development because they create barriers, preventing competitors from designing identical or similar products. On the other hand, competitor patents can present significant obstacles if you are looking to enter new markets or launch new products yourself, so it is vital to understand both the risks and opportunities which patents create.

Overlooking a patent and developing a product which inadvertently infringes a competitor's patent runs the risk of killing the product, wasting all the investment and having to pay large damages. In 2009, Abbot Laboratories was ordered to pay $1.67bn to a Johnson & Johnson company because one of its drugs (Humira) was found to have infringed J&J's patent. Obviously, most disputes will not result in such large payouts but any dispute is likely to be expensive and time-consuming and is best avoided. If the patent is discovered before the product is launched the choice may be between launching the product and risking a big legal dispute, restarting the development or abandoning the project altogether. All of these are bad options for the business and could be avoided by understanding the patent situation at the beginning.

It is clear that searching for, identifying and reviewing patents is a vitally important part of product development but with searches potentially producing thousands of results, what is the best way to innovate without getting bogged down and confused reading hundreds of complex specification documents?

At IDC, we have defined three main strategies that we use on new developments to avoid infringement and obtain effective patents for our clients. Which strategy we use depends upon the nature of the product, the industry you operate in and the patent landscape.

1. Invent and Check

This process is good for areas where you believe it is possible to create some disruptive innovation by doing things in a different way to your competitors. It is suited to relatively slower moving industries or product types where patent disputes and battles are much less common.

In the Invent and Check process, the early focus of the development is on the creation of new ideas which will create product and user advantage. These ideas are developed with a focus on creating a new and better technology or method of use. This process can be relatively quick and low cost and generate a number of new ideas. Once the new ideas have been assessed as having good potential then a patent search is used to see if there are any patents for similar ideas. Often there will be no similar patents and a patent application for the invention can then be drafted and filed. If similar patents are found then they can be checked in detail to see if they are still in force and if the new design truly infringes. If the new design concept is judged to infringe, then it will need to be modified to avoid that patent (see Identify and Avoid below). Because this process occurs at the early stage of the development process, any changes can be easily adopted without big delays or costs.

IDC used this approach for the Ulti-Rack product for Vanguard and created an innovative 'Click and Lock' assembly mechanism which was patented for the client.

2. Identify and Avoid

Many new developments start because a competitor has had success with a new product incorporating a new technology or function and you want to develop a product using the same technology or approach because that is what the market now expects. Typically, the new feature will be protected by a patent. In this case, the Identify and Avoid technique is used. It starts with a search to find the patents covering the product of interest. Once the relevant patents are identified, the details of the claims are then analysed to understand exactly what is and isn't covered by the patent. With a good understanding of the patent we can then start creating alternative solutions which would give the same effect but avoid infringement. This requires an understanding of the technology and the basic principles of patent law. When we have one or more possible solutions which we believe can avoid infringement, we provide the concepts to a patent attorney to get a formal opinion to confirm non-infringement. Once we are confident that we don't infringe the original patent, we then do a search on our new design to check that there aren't any other patents that could pose problems. Sometimes it is not possible to get the same function and avoid infringing the patent. At other times the alternative, non-infringing solution is too complicated or expensive, meaning the development should be stopped. This doesn't happen often but it is better to know this sooner rather than later so a commercial decision can then be made.

For the development of the Wockhardt injection pen, IDC used this approach. A market leading competitor product was identified and the patent found. Following a detailed analysis of the patent a new drive mechanism was defined for the injection pen. This mechanism was then patented for the client and formed the basis of a whole new range of injection pen devices.

3. Search, Invent and Check

This strategy is used where there are numerous different technologies and competitor patents which could all affect the new product. A patent search is used to define a few key areas where patents exist and get a basic understanding of the competitor patents and the features and functions they cover. In parallel with the search, concept generation work creates multiple ideas to give user and commercial advantage (in the same way as the Invent and Check process). Once sufficient ideas have been created, they are reviewed against the identified patents. Ease of avoiding the identified patents and getting a new patent are then used as two of the key criteria for selecting the product concept to be developed. The new design is then checked by a patent attorney for non-infringement against the identified patents and then a wider search is carried out to check for patentability as the design is developed.

This approach was used on the Venner Laryngoscope project by IDC. For the development of this medical device, a number of competitor patents were avoided as well as obtaining a patent for the client covering the optical arrangement used in the new product.

As well as providing protection, patents also offer an insight into the technologies that others are developing. One of the requirements for a patent is that it must provide enough information to enable the invention to be made and therefore they contain a lot of detailed information about competitors' technology as well as giving a good indication of their product strategy and development pipeline. So even if you are not immediately planning to start a new product development, keeping watch on new patents can help you plan your strategy and give you a head start when you do want to develop your next product.

At IDC, knowing how to avoid patent infringements and delivering innovative product designs with intellectual property is something we do on a regular basis for the brands who partner with us. If you have any questions regarding anything in this article and the area of avoiding patents in your own projects - please feel free to get in touch any time.

IDC Patent Strategy

About the author

Stephen Knowles is the Managing Director of IDC. A chartered engineer with 20+ years experience leading technical and non-technical product developments in the medical industry. With a PhD in Mechanical Engineering and a thorough understanding of design and manufacture, Stephen is often invited to speak on the subject of product development. Contact: stephen.knowles@idc.uk.com