Understanding Patent Infringement and Patentability.

DEREK FAHEY, ESQ.

One of the most common misconceptions about patent infringement and patentability is the idea that a new invention must be a certain percentage different—such as 20% or 30%—from an existing patented invention to avoid infringement or qualify for a new patent. However, this notion is a misnomer. This article dives into these misconceptions.

Patent law does not operate on a numerical threshold but rather on whether a new invention meets the criteria for patentability and whether it falls within the scope of an existing patent’s claims. Even minor variations in design or functionality can still result in infringement if the core elements of a patented invention are present. If you are a business owner intending to compete fairly but aggressively in the marketplace, you need to understand why percentages are not what you need to focus on.

Example: Imagine a smartphone with a patented facial recognition unlocking feature. If a competitor changes the recognition algorithm by 25% but still uses the fundamental patented technology, it could still be infringing. Conversely, if an invention is 70% different but still incorporates a key patented element, it could still be at risk of infringement.

Conducting a Patent Search: The First Step in Protection

Before bringing a new device or concept to market, it is critical to determine whether a relevant patent already exists. This process involves conducting a comprehensive patent search, analyzing existing patents, and reviewing their claims. Resources such as the U.S. Patent and Trademark Office and international patent databases are invaluable for identifying patents that may be relevant to a new invention. Also, look for terms like “patent pending,” “patented product,” or a specific patent number on a product’s website or the product itself. Write those numbers down, as they will be useful in determining how you may be able to lawfully compete.

Example: If a new blender is developed with a 40% different blade design but still incorporates a patented self-cleaning mechanism, it may still be infringing. On the other hand, a blender with 90% different components but using a patented motor function could still fall under infringement risks.

Assessing Potential Patent Infringement

If a patent exists that covers a similar invention, the next step is to assess whether the new device or concept infringes on any of that patent’s claims. Infringement occurs when a new invention incorporates all or substantial elements of an existing patent’s claims. This assessment can sometimes be highly technical and often requires legal analysis to determine whether modifications or design-around strategies may be necessary to avoid infringement.

Example: A shoe company might introduce a sneaker with 60% different materials but still include a patented air-cushioning system. Even though the materials have changed significantly, the patented feature is still present, making infringement a concern.