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Having worked as a design engineer in several fields, from largeelectronic and aerospace firms to relatively small consumer productsmanufacturers, I have been amazed at how little prior art patents areused in the product development cycle. As a practicing patent agent, Ilook for ways to educate my clients on the best way to use thesevaluable resources in their business. Prior art patents are a tremendous resource for a design team. Everypatent is a detailed explanation of a specific problem another inventorsaw and the solution he or she developed to solve that problem. In manycases, the inventor’s explanation of the problems and the solution canshed light on the mechanics and theory in the art, explanations that areotherwise unavailable to the design engineer. In a previous position as a design engineer, I was given the liberty tocompile all of the patents that related to the specific product that Iwas designing. This stack of patents served different purposes. The first was a broad survey of the problems in the art. Some of theproblems solved were of no immediate commercial interest, but werepotential new product ideas for later development. Other problemssolved were on point and had all sorts of solutions, from the practicalto the absurd. The second purpose was a detailed explanation of the theory behind eachinvention. In some cases, the theory was very thoroughly researched andvery well explained. These explanations were far more valuable than anytextbook, magazine article, or even scientific journal report, sincethey dealt with the specific problem at hand. Sometimes, the specificproblem incorporated various disciplines and technologies with quirkyside effects that would be unnoticed in the general scientific press. The detailed explanations sometimes offered a glimpse into ourcompetitor’s thinking and scientific understanding of the problems wewere both trying to solve. By reading a competitor’s patent, we haddirect insight into their generally secretive research and developmentdepartments. On rare occasions by reading between the lines, we couldpredict the direction of our competitor’s development efforts and usethis information in our strategic planning. Another use for a stack of prior art patents is as a feeding ground fornew ideas. As a product designer, I often had samples of competitor’sproducts available. We would test their products, reverse engineerthem, and dissect them for ideas. The ideas could range from afunctional understanding of the competitor’s product to themanufacturing, assembling, packaging and tooling issues related to theirdesigns. Prior art patents tend to disclose many more things than justthe claimed invention, and those ideas can also be harvested by aknowledgeable engineer. A very substantial danger in researching prior art is the possibility ofrunning across a patent that had been heretofore unknowingly infringedby the company, raising the specter of treble damages. Some companieshave a policy forbidding patent searches for this very reason. For small companies with a defined product area, it is sometimespossible to do a reasonably thorough right-to-use search on the existingproducts. Such a search will give management some comfort that priorart searches by their engineering staff will not expose the company toliability. The key to successfully harvesting ideas from prior art patents is toeducate the business management and the engineering staff. Managementmust understand the liability issues and ensure that the company isproperly protected when allowing the engineering staff to have access toprior art patents. Similarly, the engineering staff must havesufficient education to know how to understand what they are reading andhow to use these tools effectively. This is one step in effectivelyusing other people’s patents as a stepping stone on which to build aclient’s business.

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