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Up to date on: 12.11.2007
Provided by: Fraunhofer TEG

How to bypass (design around) a competitor's IPR?

A short description of the design around procedure:

The Technology Development Group of the Fraunhofer Gesellschaft (FhG-TEG) developed a concept in order to avoid patent litigations or nullity actions in the primary phases of a court proceeding. The Fraunhofer concept builds up on two branches. One branch uses a technical based work-around; the other branch makes use of the Harvard concept of negotiation. The technical work-around takes advantage from the fact, that the protection coming from a patent is determined by the patent claims. Whereby, we have to keep in mind that an infringement is not only possible in a literal sense, but also in an equivalent sense. Nevertheless, alternative designs or embodiments are not protected by the patent. Thus, the goal of the work-around method is to find alternative embodiments not protected by the patent. Therefore, it is important to understand what is described and what is protected by the patent. In European and German patents the claims often are dependent claims with a hierarchical architecture. They start quite broad in the first claim and end-up in one certain design example. The method of the technical work-around starts with the identification of the major claims and the characteristic features described in it. The features will be written one beneath the other in such a way that they form the first column of a matrix. The next column contains the characteristics of the features. Each of the features and its corresponded characterise form the rows in the matrix. The next step within the work-around procedure is based on creativity. The Fraunhofer approach makes use of a set of creativity tools in order to find characteristics which are alternatives to that described in the patent. These alternative characteristics will be filled in the rows of the matrix (see Fig.1). The filled matrix consist now of three different areas.


Fig. 1: Work-around table with listed features, characteristics and the sub-matrix containing the alternative solutions.

The first one is the area where all the features are listed, the adjacent area contains the characteristics of the features and in the third area the alternative characteristics were filled in. This filled sub matrix  - the solution matrix - is the basis of  the work-around procedure in such a way that it contains different alternative embodiments. A combination of the elements in the solution matrix represents one alternative embodiment to the invention described in the patent under dispute. Another combination of the matrix elements results in another possible solution. It is clear that not every combination will give rise to a reasonable new solution. Thus, the last step in the work-around procedure is the evaluation of the solutions out of the matrix.

The availability of one ore more alternative solutions maybe can help to solve the problem of a double engineered solution and a related potential patent infringement. The alternative solution could be even more appropriate to the problem as the protected embodiment described in the patent. Furthermore, the alternative solution is patentable or may be used as a door-opener for an agreement out of the court. Regarding the cost scenarios of both a patent infringement and a nullity action in parallel, the work-around approach seems to be an attractive alternative to expensive and long-winded patent litigations.

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