How can a company develop and market a competing product in Israel without infringing an existing patent? Suppose a competitor’s independent patent claim requires four features: A, B, C and D. Engineers propose eliminating feature D or replacing it with a different feature E that achieves a comparable result through a different mechanism. Would that avoid infringement?
This is the central question in patent design around: analyzing the legal boundaries of patent protection and developing a technologically distinct solution outside them. Design around is not an attempt to exploit a loophole. A patent discloses an invention to the public while conferring a limited exclusive right, and competitors are generally free to develop different technologies outside that right.
In Israel, a design-around assessment must be grounded in Section 49(a) of the Israeli Patents Law, 5727-1967. The statutory definition of infringement encompasses unauthorized exploitation of an invention in the manner defined in the claims, but may also extend to exploitation in a similar manner that, having regard to the claims, amounts to taking the essence of the invention. Consequently, a difference in claim wording does not invariably eliminate infringement risk.
The practical task is to identify a technical difference that matters under Israeli patent law, not merely a cosmetic change to a competing product.
Start with the Patent Claims, Not a Visual Comparison of Products
A design-around project should begin with the patent claims. Return to the example of an independent claim requiring:
A + B + C + D
If the proposed product uses A, B and C but genuinely omits D, that may defeat an allegation of literal infringement of the claim. Yet this is only the beginning of the analysis.
Before concluding that D is absent, counsel must establish what D means as a matter of claim interpretation. A patent term is not necessarily limited to the meaning initially assigned to it by the product engineer. It should be read in the context of the other claims, specification and prosecution history, including express definitions, amendments and statements potentially affecting its scope.
For Israel, Section 49(a) introduces an additional issue. Even where a product does not literally satisfy a claim limitation, the statutory inquiry may extend to whether the alternative nevertheless takes the essence of the claimed invention. It is therefore essential to examine the technological significance of the purported difference.
US law takes a different doctrinal route. In Warner-Jenkinson Co. v. Hilton Davis Chemical Co., the US Supreme Court explained that the doctrine of equivalents is applied to claim elements, rather than to the invention as an undifferentiated whole. That is useful comparative background, but it should not replace the Israeli statutory analysis.
How Does a Patent Design Around Work in Practice?
There is no single method suitable for every patent. Most projects begin by breaking the independent claims into limitations, constructing a claim chart and identifying a feature or relationship that can be changed in a technologically meaningful way.
Omitting a feature: If the competing product can function without feature D and the omission is not captured through another interpretation of the claim or the statutory protection of the essence of the invention, the omission may provide a direct path outside literal claim scope.
Replacing a feature: Instead of D, the design may use E, operating through a materially different structure or mechanism. A technological difference should be explained by reference to its operation rather than merely its shape or commercial designation.
Changing the relationships between features: A claim may require a direct connection, a particular position, response to a defined event or specified geometric relationship. Changing that relationship may matter even when the underlying components remain familiar.
Modifying a method claim: A process design around may involve removing a required step, changing a condition or, where the actual claim language makes the sequence material, changing the order of steps.
Often the stronger approach is to identify a genuinely different operating principle. Rather than ask how to make D look different, the engineering team should ask what function D performs and whether that function can be achieved through different technology.
Why Replacing One Component May Not Be Enough in Israel
Assume a patent claim requires D and the proposed product uses E. They are different components in ordinary technical language. The relevant legal question is whether the difference is sufficient to take the product outside the protection conferred by the claim.
In US law, the doctrine of equivalents may apply to an element that is not literally present where an accused alternative is sufficiently equivalent. In Warner-Jenkinson, the US Supreme Court addressed an element-by-element inquiry and discussed approaches including the function-way-result analysis and assessment of substantial differences. The Court did not impose a universal formula for every technology.
In Israel, the relevant analysis is expressed through Section 49(a), including the possibility of infringing through a similar exploitation that takes the essence of the invention. The US doctrine and Israeli statutory language should not be treated as interchangeable legal tests.
A change to size, shape, material or positioning may not be sufficient where the alternative operates in substantially the same technical manner and preserves the relevant inventive contribution. Conversely, a genuine change in the operating principle may offer a stronger basis for distinguishing a proposed product.
A good Israeli design-around opinion therefore explains the technical differences and assesses their legal significance; merely placing a cross next to one missing limitation on a claim chart is not enough.
The Prosecution History May Reveal the Boundaries of Protection
The patent prosecution file is an important source of information. During examination, an applicant may narrow a claim to overcome prior art or another objection. The applicant may also argue that a term has a particular limited meaning to distinguish the invention from earlier disclosures.
Suppose the original claim recited A+B+C, but the applicant added D after an examiner objection and argued that D was the feature distinguishing the invention from prior art. That record may be important when considering a competing design using A+B+C without D.
US law addresses some of these issues through prosecution history estoppel. In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., the US Supreme Court considered the effect of a narrowing amendment made to satisfy a patent-law requirement. Under the US approach, such an amendment may create a presumption concerning territory surrendered, subject to recognized rebuttal possibilities.
For an Israeli design around, the prosecution history remains relevant to understanding why the claims took their final form and what technical distinctions the applicant relied upon. The precise legal consequences must nevertheless be assessed under Israeli law, rather than assuming that the US estoppel doctrine applies automatically.
Foreign counsel should also consider whether the Israeli patent claims or examination arguments differ from those in corresponding US, European or other patent family members.
The Specification and Prior Art Can Point Toward Alternative Technologies
The patent specification can illuminate how the patentee used important claim terms, which advantages were attributed to a particular configuration, what alternatives were described and which technical problem the invention was intended to solve.
The prior art cited during examination is equally useful. It may show which solutions were already known, why particular claim limitations were introduced and where distinct technical approaches might be developed.
A serious design-around assessment should therefore cover at least the claims, the specification, the patent family, the Israeli prosecution file and the principal prior-art references considered during examination. It should also verify the patent’s status and identify the actual Israeli claims rather than rely solely on a foreign family member.
TRIZ as an Engineering Tool for Designing Around a Patent
After patent counsel identifies a limitation that creates infringement risk, the engineering question is how to obtain the necessary functionality in a different manner.
TRIZ, the Theory of Inventive Problem Solving, offers a structured approach to generating technical alternatives. It can help overcome design fixation by focusing on the functions a system must perform and exploring other solutions to similar engineering problems.
Consider a patented mechanical lock in which feature D secures two parts together. The obvious approach may be to look for another locking component. A broader approach asks whether locking can be achieved without that type of part at all, perhaps through altered geometry, a magnetic coupling, welding, an integrated structural element or another physical principle.
Similarly, changing a coil spring to another spring of slightly different shape or composition may not materially alter an invention that depends on spring-driven pressure. A magnetic field, hydraulic pressure or a flexible structure generating force in another manner could potentially represent a more substantial technical departure.
An engineering study concerning TRIZ and patent design around described replacing a mechanical connection in a drive joint with a friction-welding solution, retaining the intended function while avoiding the earlier connection structure. See the technical study referenced in the Hebrew guide.
Once an engineering alternative has been developed, it must return to legal review. A new operating principle may help distinguish it, but does not by itself constitute a legal determination that the product can be commercialized without infringing an Israeli patent.
Patent Design Around Is Not the Same as Freedom to Operate
Assume the revised product successfully avoids Patent X. It no longer contains D, or E represents a sufficiently different technical mechanism. This does not establish that the company can manufacture, import or sell the product without patent risk.
Feature E may be covered by another patent. The same owner may hold additional claims in a different patent. A foreign patent family member may use different claim language, and a third party may own rights that were not considered in the original design-around project.
Design around typically begins with one patent or a group of identified obstacle patents and seeks an alternative outside their scope. Freedom to operate (FTO) asks the broader question whether enforceable third-party patents may restrict the intended commercial activity in the jurisdiction concerned.
After developing the alternative, the business should therefore consider an FTO assessment appropriate to the product and Israeli market. See Patent Due Diligence in Israel for related ownership and patent portfolio review considerations.
A successful design around of one patent is not a general clearance opinion for every relevant patent right.
Design Around Is Also a Test of Patent Drafting Quality
Design-around analysis has a second use for patent attorneys: it reveals weaknesses in claim drafting.
Return to an independent claim for A+B+C+D. If D is not necessary to the inventive contribution but was included in the independent claim, the drafter may have created a possible route for competitors to omit D while retaining the product’s commercial advantage.
Every additional limitation generally reduces the range of products or processes satisfying all the requirements of the independent claim. Counsel should therefore consider whether each limitation is necessary to define the invention and distinguish it from prior art.
Design-around thinking is valuable even before filing. When drafting a patent application in Israel, an attorney can test an independent claim from a competitor’s perspective: What is the simplest change that preserves the product’s value but falls outside the claim?
If the answer is that a minor and unnecessary component can easily be omitted, the independent claim should be reconsidered, subject to the support available in the specification and the statutory patentability requirements.
Claim drafting and design around are therefore closely related skills: one defines the scope of protection; the other tests its boundaries.
A Practical Design-Around Workflow for the Israeli Market
The work begins by identifying the relevant Israeli patents, checking their status and selecting the claims that may concern the proposed product. Each independent claim is broken into limitations in a claim chart, and the meaning of material terms is assessed in light of the specification and prosecution history.
The engineering team then develops candidate alternatives: omitting a component, changing the structure, modifying component relationships or adopting another operating principle. Each alternative is assessed again for literal infringement and for the broader protection potentially available under Section 49(a) of the Israeli Patents Law.
Once a promising design is identified, the wider Israeli patent landscape and the relevant international patent family should be reviewed, with further FTO work where appropriate. The process is iterative: legal analysis identifies boundaries, engineers develop alternatives, and each alternative is reassessed before commercial decisions are made.
Further discussion appears in Yonatan Drori, Patent Law (Hebrew, 2023), Sections 1.6.3 (Scope of the Patent Monopoly), 5.3.2 (Claim Interpretation), 5.3.4 (Claim Drafting), 17.4 (Literal Patent Infringement) and 17.5 (Taking the Essence of the Invention).
For representation in infringement and validity disputes, see Patent Litigation in Israel and Patent Infringement Litigation in Israel.
