October 2008: Watching the Competition

When you conduct competitive market research, do you find out what your competitors are doing just once and then rely on the same research for months or years?  Of course not.  Yet many patent owners do exactly this when they perform one patent search before filing a patent application and then never update that search.  If you follow this strategy, the risk is clear: that competitors will file for and obtain additional patents in the interim that can either be used to invalidate your patents or to sue you for patent infringement.

That is why it is important to consider performing additional patent searches for your technology after the initial searches have become stale.  For example, we usually recommend initiating an ongoing "Patent Watch" to track the progress of any of your competitors' pending patent applications which were uncovered when performing a patentability search for one of your inventions.  A Patent Watch keeps you updated on whether your competitors' patent applications are rejected, modified, or granted as patents, thereby providing you with critical information that you can use to adjust your own patent strategy.

It can also be worthwhile to conduct an updated patent search 18 months after your initial search, because most U.S. and foreign patent applications are kept secret for the first 18 months of their lives.  As a result, your initial search may not uncover patent applications which could be used to invalidate your own patent applications.

Some in the patent profession advocate a "head in the sand" approach in which searching is kept to a minimum.  Others dislike updated searches because you must submit any additional relevant information that you find to the U.S. Patent Office in connection with your own pending patent applications, and such information can be used against you by the Patent Examiner.  The flaw with this argument is that providing additional prior art to the Patent Office, and obtaining a patent despite that prior art, actually strengthens your patent when it is granted and reduces the likelihood that the submitted prior art can be used to invalidate your patent.

Similarly, some companies insist that their inventors not perform any patent searching on their own because of the risk that the results of such searches will not be disclosed to the legal department for submission to the Patent Office.  Although such concern is well-founded, it doesn't prove that updated patent searching should not be performed, only that such searching should be performed by a registered patent attorney who will be sure to rigorously comply with the Patent Office's duty of disclosure.

Although additional searching isn't always warranted, it often has clear benefits which are frequently overlooked.  Furthermore, the cost of searching is relatively low in comparison to the costs that such searching can help you to avoid, such as the cost of defending against an unexpected patent lawsuit brought against you by a competitor who obtained a patent years ago, unbeknownst to you.  That is why we at Robert Plotkin, P.C. regularly advise our clients on the pros and cons of Patent Watches and other kinds of updated searching on a case-by-case basis.

Please do not hesitate to contact us directly should you have any questions about patent searching or other ways in which we may help you to protect your valuable intellectual property.