By Leonid Kravets
A successful business person understands that in order to stay ahead of the competition, he or she must stay informed about the competition. One way to stay informed is to monitor competitors’ publications issued by the United States Patent and Trademark Office (“USPTO”). These publications include published non-provisional patent applications and issued patents.
Generally, non-provisional patent applications are published eighteen months after filing with the USPTO, unless an applicant requests that the application not be published. Patent applications include a specification and figures describing the technology being patented.
Reviewing published patent applications can provide important insight into technologies that competitors are developing. This information can be used to shape the research and development strategy of your own business to more effectively compete in the marketplace. For example, based on information gleaned from the patent application, a design around or improvement upon the competitor’s technology may be developed. Alternatively, such a review may help your business decide to shift a in a different direction, especially where designing around the competitor’s technology will be difficult or if the competitor appears to have a strong technical advantage.
Another reason to review published patent applications is because the USPTO provides an opportunity to submit prior art to be considered by the patent examiner in charge of examining the patent application. Typically, competitors are aware of the “prior art” that is most relevant in their respective technical fields. Prior art is information that was disclosed to the public about a particular invention before a given date. Submitting such prior art to the USPTO can force the competitor to narrow the claims of the application prior to allowance of the application. Legal rights in a patent are embodied in the claims of the patent. Therefore, narrowing the claims can significantly impair the scope and value of any patent that issues from the application. Further, in cases where the submitted prior art is strong, such submissions may even prevent the patent application from being allowed by the USPTO.
If the USPTO decides to allow the patent application, reviewing published applications can provide early warning signs regarding intellectual property issues that may arise in the future. For this reason, monitoring can be especially important to provide an early warning of a potential problem if your competitors are litigious. An early warning can allow you to get a head start on formulating a response. For example, you may respond by filing patent applications directed to your technology, or by acquiring existing patents or applications from other sources.
Once a patent is allowed by the USPTO, the patent holder receives a right to exclude others from practicing the invention described in the claims. It is important to note that not all patent applications are published prior to their allowance by the USPTO. For example, where an applicant has requested non-publication of a patent application, the patent application may never issue prior to its allowance.
Having an experienced patent attorney review the scope of issued patents relevant to your business will help to determine if any threat is posed by such a patent. A patent attorney will be able to provide an opinion as to whether the claims of the patent cover any of the technologies or products of your business. If necessary, the patent attorney can provide a clearance opinion that can be relied upon by your business in case of a later litigation over the patent. Relying on such a clearance opinion will help avoid the possibility of punitive damages being assessed against your company if infringement is found during litigation. If the patent cannot be cleared, your business will be able to begin working on a design around if one has not yet been developed, or will have ample time to implement the design around developed as a result of monitoring patent applications. Alternatively, by identifying patents upon their issuance, you may be in a better position to enter into license negotiations over the patent without the threat of an imminent lawsuit.
[This post originally appeared on Startups and IP Strategy.]