Not So Obvious

Intellectual property, and patents in particular, are hard to navigate. They’re esoteric, codified in a way that’s open to interpretation and expensive. Still, a necessary ingredient for most any innovation to get off the ground.

It never hurts to brush up on things you though you knew — enter the book, Not So Obivious by Jeffrey Schox.

Great book, includes the basics but also case law examples to drive home a point.

Decision Tree Patenting Framework

Sometimes you’ll have the benefit of having a good understanding of what’s already been patented. The quote below is a really succinct, elegant process once you have identified closely related patents:

When an infringement analysis has been conducted and the results are unfavorable, the process of designing around the problematic patent may result in the avoidance of an infringement. Although the process of designing around a problematic patent is far easier to explain than to execute, the process generally includes the following four steps:

(1) Interpret each of the elements of the independent claims using the above teachings and focusing on the independent claims. Mark the elements that were amended during prosecution because these elements might not be given the benefit of the doctrine of equivalents.

(2) Identify the elements of the claims that absolutely must be included in your product or service by paying careful attention to every word. If there are no remaining elements, return to step (1) and try again.

(3) From the remaining elements, identify an element that is common between the independent claims. If this is not possible, identify as few elements as possible amongst the various independent claims. Give precedent to the marked elements that were amended during prosecution.

(4) Modify your product or process so that your product or process completely omits the element. If the element was not amended during prosecution, ensure that your product or process does not perform substantially the same function in substantially the same way to obtain the same result as the element.