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* Alternative if a conflicting patent is found: inventing around it

It may be feasible to invent around the patent -- to modify the elements of a product design so as to be outside the scope of the patent claims. The first step is to have a patent attorney carefully analyze the scope of the claims. For example, let's say a company marketed a new plastic automotive radiator. It obtained a patent whose broadest claim defines the invention as a vehicular radiator having 1) a plastic top tank, 2) a plastic bottom tank, and 3) at least 20 straight, vertical aluminum tubes connecting the top and bottom tanks. If your company then designs a radiator using the exact same plastic top and bottom tanks invented by the competitor, but eliminates tubes and comes up with a better design that uses a third plastic tank with heat-conducting baffles to connect the top and bottom tanks (or other structures not equivalent to aluminum tubes), then you will have benefited from your competitor's pioneering efforts and at the same time will have avoided infringement of its patent.

One approach to inventing around a patent is to use older products made by your company, or by others, or even products that have been discarded, provided they were not patented and were on the market for at least a year before your competitor filed an application. They may be legally safe to copy. To continue with our radiator example, let's say you wanted to copy the new plastic radiator, but wanted to use copper instead of aluminum tubes. If you can find that a third company sold an unpatented copper tube/plastic tanks radiator more than a year before your competitor's patent application, then you are free to use that same design.

A second possibility is to use designs to accomplish the same purpose that are disclosed in other patents, particularly expired or abandoned patents. Even when a certain feature is found in an old patent, however, it doesn't necessarily mean that it can be used legally -- you'll have to get an expert to help you make that determination. (A word of caution, however: certain features of products not protected by a patent may be protected under the laws of trademark, copyright, or unfair competition.)

Another approach is to review the proceedings in the Patent & Trademark Office that led to the issuance of your competitor's patent. Often, these proceedings suggest modifications that can be incorporated into your product to avoid infringement. By using these modifications, it is often possible to exclude structures or features from your product that clearly are required by patent claims, and incorporate other structures or features that do not infringe the patent. For instance, back to our radiator example, say your competitor originally asked the Patent & Trademark Office for a patent on all radiators having plastic bottom and top tanks and metal tubes. The Patent Office rejected that as unpatentable based on earlier patents or publications that disclosed copper tubes, so to get the patent, your competitor then limited his claims to aluminum tubes. Its patent is thus limited, and you can safely use copper tubes.

Still another way to invent around a competitor's patent is to devise a new patentable product or process, which at the same time does not infringe your competitor's patent. First, of course, you'll have to figure out the scope of your competitor's patent claims and the kind of modifications that could be made. And you'll have to look carefully at the patentability of your company's research developments. This is a way to improve on your competitor's product or process and provide your company with new technology that itself can be patented. Your newly designed third tank with heat-conducting baffles in our radiator example might be patentable and serve to avoid infringement of your competitor's patent as well. If so, it can then be used to leapfrog your competitor, and, at the same time, prevent your competitor from reentering the market with a product using your invention.

Too often, companies make bad business decisions about patents when only a few steps could put them on the right track. Before applying for a license, for example, a company should try to determine the following things about a patent: its validity and/or strength; the practicality of inventing around it; and whether the patent claims cover the product sought to be marketed. Admittedly, patent law is in many respects an arcane area. But neither its risks nor its opportunities should be ignored by growing businesses.

PATENT LAW

In a nutshell, here's the law as it stands today

* A U.S. patent is enforceable for 17 years from its issue date. An issued, patent excludes others from making, using, or selling a patented product or using a patented process.

* A patent defines its protected product or process in claims that set forth the required elements and features of that product or process. An unauthorized product or process that incorporates all of the claimed elements and features typically infringes the patent -- even if the product or process utilizes additional elements or features not set forth in the claims.

* A patent must be issued before it can be infringed, which means that a patent pending has no legal effect -- it serves only as an advance warning.

* A patent application generally takes from six months to about four years to issue as a patent, and is kept secret by the Patent & Trademark Office up until the time the patent is issued.

* If the Patent & Trademark Office, or a court, determines that a claimed invention has been marketed for more than a year before a patent application is filed, the patent will be rejected or declared invalid.

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