Design around
Also called designing around, design-around, inventing around, invent around, patent work-around
Design around is the practice of changing a product or process so that it avoids infringing a patent owned by someone else. WIPO calls it "inventing around": steering research, or making changes to the product or process, in order to avoid infringing the patents of others1.
WIPO lists it as one option, alongside purchasing or licensing the patent, cross-licensing and patent pools, for a company whose freedom to operate is limited by a patent, assuming the blocking patent is valid1. See Freedom to operate.
What designing around involves
WIPO describes inventing around as steering research, or making changes to the product or process, in order to avoid infringing on the patents owned by others. Its example: if freedom to operate is limited by a process patent, a company may be able to develop an alternative process for arriving at a similar end result and commercialize the invention without paying a licensing fee to someone else1.
It works because of how patent scope is set. WIPO states that the claims section of a patent document determines the scope of the patent, and that any aspect of an invention not covered by the claims is not considered to be protected1. WIPO also says that it is not always easy to determine the scope of a patent, because that requires considerable experience in interpreting the claims, the written specification and the history of the application process1. See Claim construction.
Where it sits among the options
An FTO analysis based on a search of patent literature is only the first step. If the search shows that a patent limits a company's freedom to operate, WIPO says the company must decide how to proceed, and that, assuming the blocking patent is valid, the options include those below1.
| Option | What WIPO says |
|---|---|
| Purchasing the patent or licensing in | Licensing is written authorization from the patent holder to use the patented technology for specified acts, in specified markets and for a specified period of time. It may be the simplest way of clearing the ground, but the holder will require payment of a lump sum and/or periodic royalties1. |
| Cross-licensing | Two or more companies exchange licenses so as to use certain patents owned by the other parties. A company needs a well-protected patent portfolio that is of value to potential licensing partners1. |
| Inventing around (designing around) | Steering research, or making changes to the product or process, in order to avoid infringing on the patents owned by others1. |
| Patent pools | Two or more companies practicing related technologies put their patents in a pool to establish a clearinghouse for patent rights1. |
WIPO's list assumes the blocking patent is valid1. Whether it is valid is a separate question. See Invalidity search.
Why a design around can still infringe
The claims determine the scope of a patent1. The tabs show how the US and the EPC also take equivalents into account3,4,7.
United States
- Whoever without authority makes, uses, offers to sell or sells a patented invention within the United States, or imports it into the United States, during the term of the patent infringes the patent (35 U.S.C. 271(a))2.
- Under the doctrine of equivalents, a patentee may proceed against the producer of a device if it performs substantially the same function in substantially the same way to obtain the same result (Graver Tank, 1950)3.
- The doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole (Warner-Jenkinson, 1997)4. See Doctrine of equivalents.
- In State Industries v. A.O. Smith (Fed. Cir. 1985), the Federal Circuit described one of the benefits of a patent system as its so-called negative incentive to design around a competitor's products, even when they are patented5.
Europe
- The extent of the protection conferred by a European patent or a European patent application is determined by the claims. The description and drawings are used to interpret the claims (Article 69(1) EPC)6.
- For the purpose of determining the extent of protection, due account is taken of any element which is equivalent to an element specified in the claims (Article 2, Protocol on the Interpretation of Article 69 EPC)7.
- Infringement of a European patent is dealt with by national law (Article 64(3) EPC), so the courts that hear the case apply equivalence8.
Seen in the record
The decision below contains a Federal Circuit statement on designing around. It is an example of how the term appears in US case law, and says nothing about either party beyond the decision itself.
State Industries, Inc. v. A.O. Smith Corporation
Decided January 3, 1985. The court affirmed the district court's holdings that the patent was valid and infringed, and reversed the holding that infringement was willful. It described one of the benefits of a patent system as its so-called negative incentive to design around a competitor's products, even when they are patented5.
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Run FTO SearchQuestions people ask
Is it legal to design around a patent?
Yes, avoiding infringement is lawful, and the Federal Circuit has described the negative incentive to design around a competitor's products, even when they are patented, as one of the benefits of a patent system5. A change that stays within the claims, or within what the law treats as equivalent, still infringes: in the US an accused device can infringe under the doctrine of equivalents3, and in Europe due account is taken of equivalents when the extent of protection is determined7.
How do you know a design around avoids the patent?
By comparing the changed product or process with the claims, because the claims determine the scope of the patent1,6. WIPO says this is not always easy and requires considerable experience in interpreting the claims, the written specification and the history of the application process1. An FTO analysis includes a legal opinion on whether a product, process or service may be considered to infringe the patents found1.
Does a design around also need to avoid equivalents?
Yes, it should be checked against them. In the US, an accused product that is not identical to a claimed element can still infringe if it performs substantially the same function in substantially the same way to obtain the same result3, applied element by element4. Under the EPC, due account is taken of any element equivalent to one specified in the claims7.
Is designing around the only way to deal with a blocking patent?
No. WIPO lists purchasing or licensing the patent, cross-licensing, inventing around and patent pools, and the list assumes the blocking patent is valid1.
How it connects
Go from the term to the task
Read how the method works, run it on your own product or idea, then try a free tool.
- 01 / How-toHow to run a freedom-to-operate analysisScope, search, claim review and the report counsel will ask for.Read
- 02 / AI agentFTO Search AI AgentAn AI agent that finds in-force patents that could read on your product, with a claim chart for each one.Run it