Las Vegas, NV asked in Intellectual Property and Patents (Intellectual Property) for Nevada

Q: Regarding the porter case patent.. if I change the material or a little design just a little is it acceptable?

2 Lawyer Answers
Peter D. Mlynek
Peter D. Mlynek
Answered
  • Patents Lawyer
  • Moorestown, NJ

A: I am not sure which Porter Case patent you are referring, so it is hard to answer this question. But here are some guidelines.

(1) There appears that are only about 6 Porter Case patents. Some of these are pretty old, and they have expired by now, but some are still in force. You need to check which of these categories the patent that you are concerned about falls into.

(2) I did not review the claims as much as one should in order to advise you, but it seems that at least some of the claims recite cases by how it is constructed or designed. The ones I saw don't seem to claim the material from which they are constructed. This means that if you change the design of the case sufficiently, you'd be outside of the scope of the claims, but if you change the material, you'd still be within the claims. So you are going to have to argue that you do not infringe the patent because of the design and not the material.

(3) Just how little is enough be outside of the scope of the claims? It is difficult to say, because sometimes a tiny change will get you outside of the scope of the claims, and at other times even a big change won't. Every patent is different. It is a crapshoot. It depends on how many other patents to the similar thing are out there, and how much of an innovation this product is. The safest way would be to be much closer to the design of carry-on cases that were cited against the patent application during the prosecution, but Porter Case argued that their product is different.

Please let me know if you need more help.

Good luck!

Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: The answer from Mr. Mlynek is correct. Here are some things to help flesh out the vocabulary. What you are seeking is an opinion on whether your changes give you Freedom to Operate (FTO) relative to one or more patents that you have found. Additional information on this topic may be found at https://www.flynniplaw.com/services/legal-services/freedom-to-operate/opinions .

It may be prudent to add additional differences between your product and the claims in non-expired patents, this can be tricky because of a weird set of rules under the Doctrine of Equivalence (where the patent claim covers more than it literally covers). It is a good idea to work with a patent attorney with the right technical background to help you do this work. See https://www.flynniplaw.com/services/legal-services/freedom-to-operate/design-around-guidance

Before doing any heavy lifting, it is a good idea to have a patent attorney check to ensure that the patent that is of concern is still in force. You can look at my answers to other questions to see how to check to see if a patent is still in force.

I hope this helps.

Kevin E Flynn

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