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“Designing Around” the Prior Art

When a patent application is rejected, it is often possible to overcome the USPTO’s objections by “designing around” the prior art. In this video, patent attorney Pat Werschulz explains the ‘design around’ process and how it may help you obtain patent protection for your idea.

Innovations can still be found if you know how and where to look

If you receive a notice of rejection from the United States Patent and Trademark Office (USPTO) because the patent examiner feels that your idea is obvious or not novel, there are various things you can do that may result in your still getting a patent. One of them is to design around the prior art that is the patent examiner’s grounds for rejection.

It may be possible to bring your idea a little bit further than the examples in the prior art by looking through the prior art again, to see if there’s something that was missed—some element you can change or something new you can add—so that you would still have something that is novel and non-obvious.

One thing you can do is look at the prior art and really examine how other people solved the problem. Then go back and come up with your own solution—but add a different structure or a different function. Try not to do just simple substitutions; that won’t work. For example, if you say you want to use a nail instead of a screw, the patent examiner knows that they’re really equivalent, and your solution won’t be allowed.

You may wonder why you would bother to design around the existing patents when there are so many patents already out there. Well, guess what? The very fact that there are so many, and the problem still exists, may mean that the best solution has not yet been found. And if you can obtain patent protection for your idea, and the marketplace sees your idea as the best solution out there, then it’s well worth the effort!