Should Entrepreneurs Monitor Their Competitors For New Patents?

Now that the America Invents Act (AIA) has kicked in completely, Entrepreneurs should consider monitoring their competitors’ (post-AIA) patent applications and patents as they “publish” and “issue” respectively. 

That is, they should do so if they want relatively inexpensive (sarcasm intended) ways to challenge their competitors’ documents.  The AIA provides entrepreneurs several procedures for challenging these legal instruments.  See our October 4, 2011 posting.  Two of these procedures come with short windows in which to catch the publication/issuance of these documents.  3^rd party citations require the challenger to act before the latler of 1) the first office action for an application or 2) its publication +6 months.  PGR (Post Grant Review) requires action within 9 months of the issuance of a patent.

In deciding whether to make a 3^rd party submission, you should consider whether to do so anonymously.  Anonymity would shield you from identifying yourself as a party potentially worried about the document.  If you want to bring your patents and (to a much lesser extent) applications to your competitor’s attention (setting up a potential case of willful infringement – against them), though, anonymity might not serve you.

PGR represents a different beast.  You cannot maintain anonymity during PGR.  You will almost certainly identify yourself as a potential infringement target, particularly if you lose.

You should also be aware that if you identify a document pertinent to your activities you might be opening yourself up to a charge of willful infringement.  But, it might be better than waiting to be sued.

Moreover, you should be aware that actually identifying a particular competitor’s documents might be hard to do.  For one thing, not every patent-related document identifies the owner.  Such factors might lead to somewhat spotty results.  But doing so with some degree of success is not impossible with skilled help. 

On that note, be aware that these procedures are legal proceedings and you will likely need the help of a Patent Attorney.  We at the Villhard Patent Group would be happy to discuss this subject and other IP (intellectual property) related matters with you.  Feel free to call us at 512-897-0399 or write us at contact@villhardpatents.com.  For more information about us see www.villhardpatents.com.

* Note: this article was co-authored with Jeff Kuo of Hulsey Intellectual Property Lawyers (see www.hulseyiplaw.com).  Jeff can be reached at jkuo.5288@gmail.com