Design-around biotechnology patents: an analysis of US Federal Circuit decisions shows the possibility of designing around biotechnology patents.

In order to demonstrate the possibility of design-around for patents, we reviewed 40 no-infringement cases out of all 4,760 Federal Circuit Court of Appeals (CAFC) cases decided from 2001 to 2009. Based on this analysis, designing around a biotechnology patent first requires a thorough reading of the patent specification and prosecution history. These written descriptions offer explicit directions about claim meanings or the scope being disclaimed. By statute, claims recite and define the structure or acts of an invention, and serve as tools to determine whether or not a patent is infringed. The next procedure would include omitting a part or property from the claim, reversing the action used in the claim, or changing the claim's structure or range to prevent the new design from falling within the scope of the claim. However, cases where patent infringement was found demonstrated that changing the structure or range not recited in the claim, such as enlarging the diameter, reducing concentration or alerting the shape, still falls within the scope of the patent. Although the 40 cases analyzed in this study were not related to vaccines, the thought process can serve as a guideline for patents related to vaccine development.