Altering a patented web application

Question

I'm working on a rewrite of a patented web application. When the application was patented couple of years ago, the original developer made some rather aged user interface choices (such as the style of navigation hails back from the early 2000's). The patent outlines the process flow of the application (includes flow charts, etc.), and then it has a crude wireframe-style (i.e. patent application style) representation of some of the application screens. These screens include the legacy navigation. The product owner is concerned that should the navigation be modernized, the patent would potentially be invalidated because the app screen would no longer be exactly like it appears on the patent printout.

However, the updated new menu I'm proposing has the same menu choices; their location just changes some. This is even more of an issue on the mobile side as the legacy style menu won't properly fit there, and it would also violate the typical user experience expectations in the mobile environments.

So my question is, can these cosmetic user interface changes be made while keeping the patent intact? The proposed changes won't in any way affect the operation or the process flow described in the patent.

Thank you for any advice and/or insights on this issue!

Answer 1

In short: you'll be fine to redesign.

As a brief overview, a patent exists to prevent other people from using an invention. That invention is defined solely by the claims of the patent. Although the patent must include a description and drawings, they do not define the scope of the patent: only the claims do. So it doesn't really matter what the drawings show.

I have no information about what the claims of the patent are. However, you mentioned that the patent includes flow charts defining a process. The claims will very likely include some of the steps shown in the flow charts, and will very likely not mention anything about how the interface looks. In fact it may not mention a UI at all. Thus any web application which performs those steps will fall into the scope of the patent, regardless of what the web application looks like.

However, even if I was wrong, and changing the look of your client's product made a material difference to whether the product falls under the patent, it doesn't matter. Your client does not need to use their own patented invention. The patent exists to prevent other people from using it, not to force the patent holder to use it.

Moreover, the patent will be equally valid whether or not the patent owner's own product matches the drawings. Patent validity (that is, whether it can be used to prevent someone else using the claimed invention) is based on what was available before the invention was made. It is basically irrelevant what happens afterwards.

Answer 2

It depends on the claims of the patent compared to what you are doing. If what you are doing reads on the claims, the the new product version would be covered. It's impossible to say for sure without seeing the claims and comparing them to the new version.

You mention that "The proposed changes won't in any way affect the operation or the process flow described in the patent." However, keep in mind that it's the claims that define what's patented, not the drawings or descriptions. Those provide a guide to the claims, but are not ultimately controlling.

For example, it's possible that you have a process that matches some parts of the drawings and specification, but is not covered by the claims. Consider talking with your patent attorney about this.