Developing new products and ideas, without infringing on existing patents

[Robert Karl]

Hi everyone.
Firstly, I do not intend for this to be a discussion on the merits or failures of patents

So here is my problem; Although I have a lot of ideas, I feel like most are unlikely to be truly original.
I don't want to waste time on designs that may need to be scrapped because I overlooked some preexisting patent.
Large companies can just get a patent attorney to cover themselves, but this is maybe not realistic for individuals.


I would like to know from any other engineers, designers or "inventors" out there, that have designed or brought a product to market:
How did you ensure your product did not infringe on existing patents?
Do you care, and does this consideration impact your design process?
Does anyone have a product that uses externally patented IP?

[Rerouter]

You can always work on the principle of stupidity, If you never look, and never use any of another persons work to reach your product, then you may be able to work around things a little, If you have proof showing you reached your design without external help, then its pretty clear you had no intention of infringing a patent you did not know about.

As to the proof aspect, I generally have a timelapse going while I design things, makes for some self entertainment if I forgot why I chose a particular solution

This is personally the method I work off, never look, but I rarely sell things above 300 units, so very unlikely that I am going to get picked on by some larger party

If you actually want the inverse, patents submitted by groups fresh out of university have a very high rate of either failing to complete the process or failing to renew if you want to take ideas that have a released patent you can point at. This is where I have looked in the past,

[filssavi]

That is unfortunately one of the big issues with the patent system, especially now that big players (apple, microsoft and google in particular)  are involved, and I don't think there is a real solution, you should do a bit of research, however it's unlikely to be really worth it unless an experienced patent lawyer can interpret the legalese.

It happend to a friend of mine, he is doing a PhD in the grid side power electronics field (smart grids and stuff) and found out a microsoft patent that if litigated correctly could cover his stuff. We are shure microsoft never intended the patent to apply to that field, and they will probably never use it in a product (unless they start building power converters which is higly unlikely). However that does not matter in the least, the only thing that count with patent law is the depth of the pockets of the litigants.

How the things work right now is that if your device is not already on the market, and you don't have the money for the lawyers, you basically gamble it, you sell your product, if some patent troll comes up with something you just pay what they want to extort from you (they are usually reasonable) and go on with your life, I would also set up an LLC of some description, so if shit really hits the fan the company will declare bankrupcy and  you are done with it

DISCLAIMER:I AM NOT A LAWYER

[kosine]

Do some research with the online patent systems. Google patents is OK, I find the European espacenet.com site a bit easier to use.

Very few patents / inventions are totally new. Most will have a whole family tree of prior art. Just search for relevant terms and see what comes up. Most will also have cited and citing references, plus the patent description usually starts with a list of already known prior art patent numbers. All patents are also grouped by classification numbers, sometimes searching through a particular class can also bring up results. Searching for other work by a particular inventor is also worth doing, since they often have other patents for similar ideas. Basically, you need to spend a good bit of time going through the archives to see what's already been done. (It's not to bad these days. Before everything went online you had to search the records on microfiche, which was not much fun!)

As for what you can get away with, anything mentioned ("disclosed") can't be patented, but can possibly be used without infringement. Anything contained in the claims is what's been protected, so you can't copy that.

However, all patents expire after 20 years, so anything older is now public domain. A lot of patents are also abandoned before 20 years (check the legal status links), so they're OK to copy also. On top of that, patents are country specific, so even if a live patent exists in one country you can still copy it elsewhere. (You just couldn't produce or sell anything covered by the patent in a country that is covered.)

As for the "I didn't know" ignorance excuse, that won't work. Also be aware that in patent law there's no statute of limitations, so you could be sued years down the line, even after any infringed patent has expired. If you were copying it while it was still in force, then you're liable.

If you feel like hiring a patent attorney, they will simply do exactly what I've described above. So DIY and save yourself a lot of money.

[daqq]

Disclaimer: IANAL

So here is my problem; Although I have a lot of ideas, I feel like most are unlikely to be truly original.
I don't want to waste time on designs that may need to be scrapped because I overlooked some preexisting patent.

Also note that there are other things where similarly complicated things may have been published, many of them behind a paywall or not public. These include scientific publications, magazines... So, not just patents prevent you from patenting stuff.

How did you ensure your product did not infringe on existing patents?
Do you care, and does this consideration impact your design process?

1. You search existing patents in the area where you want to use/develop the idea, desperately trying to think of convoluted wordings that could have been used to describe your idea. Then you give up because the way that the patents are worded is intentionally vague enough to be borderline useless, but still useful as an attack vector.
2. I care, It does - I check stuff within my limited capability against google patents, but there is absolutely no way to be 100% sure that there aren't any (local/global) patents or any variations there of (patents are not the only way to protect your idea) describing your idea. Basically checking your design/implementation/idea against everything, even with the awesome tools at hand these days is probably a futile full time job. At the end of the day the best I can do is to be reasonably sure that I haven't overlooked any obvious things I could infringe.

The problem is that the patent system is used mostly as a place where large corporations can attack one another.

[kosine]

It's actually quite rare to have any prior art crop up which isn't in the patent archives (there are about 100 million patents on file). So although technically magazines, pay-walled journals or other publications do count (even disclosure at a public event or a YouTube video), anything relevant will probably have cropped up during examination of a prior art patent already.

The biggest risk is that once an idea becomes technically possible, there's a good chance other people will be working along similar lines. And since patents aren't published for 18 months, there's an inconveniently large window in which you can spend a lot of effort developing your product, only to discover someone beat you to it. But that's just life really, balancing risks versus rewards.

By doing the research you can at least rule out anything older than 18 months, and even the biggest corporations with armies of lawyers have exactly the same problem.

As for overly broad patents, some countries do have systems for challenging their validity at any point. In the UK you can request a "patent opinion" for not a lot of money (£200), where an independent examiner will review an existing patent. You can also request an infringement opinion, and although they're not legally binding, they do carry a lot of weight and are a pretty good way of determining where you stand.

[Robert Karl]

Thank you everyone for your opinion and advice on this.

It generally confirms my thoughts on the matter, but it is great to hear from people who have walked this path before.

(kosine, good point on the 18 month window of non-visibility as well. I imagine that has caused the frustration of many).

[David Hess]

You can always work on the principle of stupidity, If you never look, and never use any of another persons work to reach your product, then you may be able to work around things a little, If you have proof showing you reached your design without external help, then its pretty clear you had no intention of infringing a patent you did not know about.

The law discourages checking existing patents for the purpose of avoiding infringement because doing so is evidence of intentional infringement.  At every place I have worked as a designer, I have been forbidden from searching through patents for this reason.

This is personally the method I work off, never look, but I rarely sell things above 300 units, so very unlikely that I am going to get picked on by some larger party

I think being below notice is the best defense.  Anything more effective requires too much time and effort and increases the risk of providing evidence of intentional infringement.

It's actually quite rare to have any prior art crop up which isn't in the patent archives (there are about 100 million patents on file). So although technically magazines, pay-walled journals or other publications do count (even disclosure at a public event or a YouTube video), anything relevant will probably have cropped up during examination of a prior art patent already.

I disagree.  The patent office has relatively short list of publications which they consider for prior art and their default policy is to treat patents as narrowly tailored further limiting the application of prior art.  Combined with courts considering patents widely tailored, this leads to massive over-inclusion.

[kosine]

In Europe (and Ireland), not searching for prior art is no defence in court - you're still liable for infringement. And the law most certainly doesn't encourage not doing it!

This is one of the reasons Europe made all the patent archives publicly available and easy to search online. It's also partly why the UK IP Office introduced the cheap opinion system. The US legal system may well be geared differently (I haven't been to court in the US - yet!), but in Europe you're expected to perform due diligence in your business activities. (Kind of like meeting all those CE regulations, which are technically self-certified - you're expected to have done your homework.)

Over here, you can't just go to market with a product and later argue you "didn't want to check if it was OK in case it turned out it wasn't". That in itself would be seen as a willful act of negligence, and by extension could also be construed as form of "willful infringement". (Although getting a willful infringement judgement in Europe isn't all that easy since it boils down to the hearing examiner's own opinion, and you need a lot of convincing proof - which generally isn't forthcoming. In Europe, patent law is actually a separate system and doesn't follow normal legal procedures. In European patent law, cases are not heard by judges, there's no requirement for full disclosure, and no burden of proof. Basically whoever convinces the examiner on the day wins and there are no joint verdicts. So it can be a bit of crap shoot, to be honest.)

The only safe way to launch a product over here is to do the research and make sure it's not infringing someone else's IP. (That also includes designs and trademarks, which are also all online these days.)

[Marco]

The only way to be sure is not to play.

[nctnico]

You can always work on the principle of stupidity, If you never look, and never use any of another persons work to reach your product, then you may be able to work around things a little, If you have proof showing you reached your design without external help, then its pretty clear you had no intention of infringing a patent you did not know about.

Unfortunately it doesn't work that way. 'I don't know' is not a defense any court will honor.

The best way is to check your idea against existing patents. It is very likely that there are several patents which already show the same idea. If you are serious about a product then it is worthwhile to have your idea checked for originality.