Patent Design Arounds: Minimizing Risk of Infringement or Reducing Likelihood of Competitor Design Arounds

Navigating Claims, Specifications, Prosecution History, Prior Art, and Other Key Considerations

Recording of a 90-minute premium CLE video webinar with Q&A


Conducted on Tuesday, November 10, 2020

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to patent counsel on how to leverage design arounds to reduce the risk of patent infringement. The panel will also discuss what counsel can do when drafting patent applications to minimize the likelihood that competitors can design around the patent.

Description

When preparing to launch a product and discovering an already existing similar patent, patent counsel and their clients should weigh several considerations. Counsel must consider whether there are elements they can do without that does not include all the same details, what can be altered or tweaked, and whether the owner of the potentially infringed patent by the client's product has pendency.

Likewise, when patent counsel is preparing a patent application, they should keep in mind the possibility of design arounds and take steps to minimize the likelihood that a competitor can design around the patent.

Design arounds have become particularly important in the context of damages. The cost of executing a design around will vary. They will probably be less costly than damages for infringement or paying for a license. Further, design arounds demonstrate an intent to avoid infringement.

Listen as our authoritative panel of patent attorneys examines critical considerations when seeking to design around a patent and when patenting an innovation to minimize the likelihood of design arounds. The panel will also discuss design arounds in the context of damages.

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Outline

  1. Using design arounds to minimize infringement risk
    1. Specifications
    2. Prior art
    3. What can be altered/tweaked?
    4. Are there elements that can be eliminated?
    5. Continuation applications pending?
    6. Costs to license?
  2. Drafting patents to reduce the likelihood of another party design around the patent
  3. Design arounds and damages

Benefits

The panel will review these and other key issues:

  • What factors should patent counsel consider when seeking a design around of a valid patent?
  • What steps can patent counsel take when preparing a patent application to reduce the likelihood of design arounds?
  • What role do design arounds play in the context of damages?

Faculty

Burns, Patrick
Patrick G. Burns

Shareholder
Greer Burns & Crain

Mr. Burns’ practice is focused on patent prosecution and opinions. He has handled litigation involving a variety...  |  Read More

Lazar, Dale
Dale S. Lazar

Retired Partner
DLA Piper LLP (US)

Mr. Lazar counsels on intellectual property matters concerning a variety of technologies. He concentrates his practice...  |  Read More

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