Are Your Competitors Gaining On You? – Monitoring Competitor Patent Activities

Are Your Competitors Gaining On You? – Monitoring Competitor Patent Activities

How aware are you of your competitor’s patenting activities? Are they seeking patents that could impact your development of future product lines in your technology area? Are they moving into new technologies that could be game-changers? Are new players entering your space?

One way to gain some insight into your competitor’s activities is to monitor their patenting activities. Patent applications are published 18 months after filing, and they can provide valuable insights into the competitive landscape and may give you a heads-up before new products hit the market. An awareness of your competitor’s patenting activities may also enable you to proactively take steps to prevent damaging patents from issuing or seeking their revocation if they do.

There are a number of different strategies that can be used to watch your competitors. One strategy is to conduct periodic searches or set up watch alerts for published applications that the U.S. Patent and Trademark Office classifies in the same patent classes as your technologies. For example, let’s say your company makes implantable cardiac defibrillators. Under the Patent Office’s classification scheme, your patents will likely be classified under Class 607 (Surgery: Light, Thermal and Electrical Application) and in subclass 5 (cardioverting/defibrillating). A search of all issued U.S. patents in this class reveals that 82 of them were issued in 2013 to a variety of companies including, Medtronic, Cameron Health, ZOLL Medical, Qualcomm, and others.

A search of published applications in this class indicates that 38 of them were published in 2013. Many of the applications identify the company to which they are assigned. Some companies take steps to avoid having their name appear on published applications. In such cases, additional work may need to be done to determine the companies with which individual applications are associated. However, the identity of the companies can often be determined based on the name or location of the inventors or using the USPTO assignment database. In addition to using the USPTO’s patent classes, searches can also be conducted based on key inventors and specific terms appearing in the specification and/or claims.

What can you do with this information? Here are a few possibilities:

1. Look at your own pending applications and see if you can add claims that may block your competitors in the areas identified by their published applications.

2. Design around the claims your competitors are seeking and head off infringement problems before they have the opportunity to develop.

3. Conduct prior art searches and submit prior art to the Patent Office using the “Pre-Issuance Submission” provisions of the America Invents Act (AIA).

4. Continue to monitor the progress of the competitor applications and use the Post Grant Review, Inter Partes Review, or Ex Parte Reexamination procedures provided by the Patent Office for challenging patents. We discussed these various options in a previous blog post: http://hanseniplaw.com/strategies-for-leveraging-the-america-invents-act%E2%80%99s-tools-for-challenging-patents

If your main concern involves patenting outside of the U.S., some of these strategies may also be useful depending on the circumstances.

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