Design-Around

An approach to dealing with a third party patent by designing the product or process so that it does not infringe. Design-arounds typically look for prosecution history estoppels or approaches that the patent teaches away from. Usually a company that develops a design-around will seek a non-liability opinion from counsel. A patent that cannot be designed around is usually described as an essential patent.

Typically, pioneer patents have broad claims and are more difficult to design around while incremental patents have narrower claims and are easier to design around. Many fundamental technological breakthroughs have resulted from efforts to design around, a well-known historic example being SONY’s Trinitron CRT television tube developed because the US manufactures of colour televisions would not license to Japanese companies their technology.  The Trinitron was vastly superior in manufacturing cost and quality to the unlicensed technology.  The Antenna Wars are also often cited as an example of design-arounds fostering innovation and shifting competitive advantage.