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… patents are like building blocks. Each new patent stands on top of maybe 100 other patents that get you up to that point, a starting point… that’s what allows progress.
If you’re an innovator, you need to understand IP
There are several reasons your team might want to search and review patents when working on an innovation project.
Knowing the existing intellectual property (IP) around a technology you’re working with can help avoid wasting time and money, and shape subsequent design and development. Patents are also an incredible source of information — often the first place that new devices and technologies are made known to the world.
Designers and technologists might be reluctant to search and review patents because of the complex legal language. While we are not attorneys, we do look at patents to guide and inform our design process. To ensure best practices, we reached out to IP attorneys, Edward D. Manzo and John H. Choi, to develop some high-level guidelines on conducting your own preliminary patent search and how to review the results.
Broadly speaking, this is a four-step process – Search, First look, Specification, and Claims.
For the purposes of this guide, we are using patent US 8579866B2, “System and Methods for Administering Medication” which patents a syringe system Smart Design created in collaboration with OXO and UCB Pharma. This product, featured in Helping Hands, highlights a new family of user-friendly products that puts patients in control, giving them more options, more independence, and more “good days.”
There are three main options. Note, the last two options will require you to understand and review patents yourself. Option 1 is to hire a patent search service to conduct a full search with insights and recommendations. Option 2 is to hire a service to do a limited search, resulting in a list of patents of interest. Or, you can conduct a patent search yourself.
Conducting your own patent search
It’s not a complex process, but it’s often time-consuming and it can be difficult to sort through the enormous number of results to find those relevant to your project. Luckily, there are plenty of online guides and tools to help.
The USPTO
“Seven-step U.S. patent search strategy”
Upcounsel
How to Do a Patent Search
Basic breakdown
Cover sheet
This gives a summary of the patent, including its title, inventors, a short abstract, and a list of prior art that it cites.
Drawings
These numbered diagrams show the invention but often don’t explain what makes it innovative.
Specification
These explain in technical detail how the invention works. It includes several sections—the “Description of the Invention” is usually the most important.
Claims
The most important section of the patent! Claims are where the inventors explain what unique aspects or capabilities of the invention they’re trying to protect.
First look
Patent timeline
A patent can have a few different kinds of status, as it goes through the application process. As soon as the application is filed, the patent is “in process.” Once granted (which may take several years) it’s an “active” patent. If the maintenance fees on the patent are not paid, or its term simply runs out, it eventually becomes “abandoned” or “expired.” In these cases, information in the patent is publicly available and can be used as is. An “abandoned” patent can be revived though, which can cause future infringement problems.
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Status of the patents that you’re looking at does matter. Because if the patent that you’re looking at is expired, then you don’t have to worry about infringement because you can’t enforce an expired patent. However, it is important to note that patents that have expired because of failure to pay maintenance fees can be revived if certain conditions are met.
Application data
New inventions are often broken into several patents—for example, one might cover a device and another its method of use. This section gives a history of the patent and others related to it, so you can see if one patent has been abandoned while another (called “continuation”) is active.
Abstracts can be deceiving
An abstract describes a device, but may not indicate what’s unique about this patent. For that, you’ll need to read the Claims.
Prior art
References cited in a patent are considered relevant to patentability. It strengthens the patent if your claims were able to overcome references that are close to your invention.
Specification
The Specification describe the invention in detail. But they’re also a great tool for learning about the specific category and technology the invention is part of.
Reviewing the Description of the Invention – It’s often good practice to open a patent’s drawings in a separate window (or print them out), so you can reference them when reading through the Description. In this patent, reviewing the Description alongside the drawings reveals that the handle is designed to give patients two ways to grip it, depending on their level of control and grip strength.
Within the Specification (and Claims as well), there might be multiple Embodiments—different ways an invention can be used or made. This patent has two main embodiments, plus additional embodiments that are specific to the cap. These embodiments include every aspect of the invention, but in some cases, an embodiment might be written to only include what’s different from previous versions.
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The fact of the matter is that the written description must support the claims. And the claims are interpreted in light of the written description, and the written description informs the claims. So what that means is, before you claim it, you got to tell me how to make it and use it.
Claims
The Claims section is usually the most important part of the patent since it lists what makes the invention unique or innovative. It’s also often the hardest section to read: each claim can only be one sentence long, which can result in extremely long, complex sentences.
Claims come in two flavors: Independent claims, and Dependent claims which reference them. In this example, only claims 1 and 11 are Independent. All the others are Dependent: they reference claims 1 and 11 and call out additional details. In practice, this means you can often ignore the Dependent claims during your initial review of the patent: if the Independent claim isn’t infringed, the Dependent claims that follow are also of no risk. Independent claims are almost never completely identical. So, it is always a good idea to review all independent claims.
Conclusion
There’s plenty of prep work you can do yourself, that will help you identify possible opportunities and risks on a new project, get a grasp on the current technology, and shape your design direction. This guide is definitely not a substitute for qualified legal advice. And if you choose to do this yourself, once you have a well-defined product, it’s crucial to have an attorney run a full IP search to make sure it doesn’t infringe on an existing patent, and/or establish whether it’s patentable. Share the results of your preliminary search with them!
About Vasily Romanov
Vasily Romanov is a senior design engineer who strives to make the world a better place through good design and engineering. He brings expertise in product development and design for manufacturing to his clients and has applied his skills across the medical device, pharma, manufacturing, and consumer product industries. His notable clients include DJO Surgical, Stryker, and Beckton Dickinson, and has lectured as a part-time adjunct at the New Jersey Institute of Technology. He holds a master’s degree from Temple University. In his free time, he enjoys hanging out with his son, woodworking, and doing his own car and motorcycle maintenance.