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Patent Design Arounds: Minimizing Risk of Infringement and 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

This program is included with the Strafford CLE Pass. Click for more information.
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Conducted on Wednesday, November 9, 2022

Recorded event now available

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This CLE course will guide patent counsel on leveraging design arounds to reduce the risk of patent infringement. The panel will also discuss what counsel can do when drafting patent applications to minimize competitors' likelihood of design around the patent.

Description

When a patent owner is preparing to launch a product and discovers an existing similar patent, patent counsel should weigh several considerations. Counsel must consider whether there are elements they can do without that do 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 consider the possibility of design arounds and take steps to minimize the likelihood that a competitor can design around the patent.

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.

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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 designing around the patent

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?

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, Adjunct Professor, Antonin Scalia Law School George Mason University
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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