United States: Top Ten Things to Do About Your Competitors’ Intellectual Property

Monitoring competitors’ intellectual property not only informs you of what protection your competition is getting but also provides insights into the competition’s technology and marketing focuses. If you are nimble enough, this knowledge can provide a significant business advantage. Here are some of the things you can learn about your competitors’ IP and how that information can be used to your advantage.

Patent offices around the world publish patent applications, some as early as 18 months after filing, well before a patent typically issues. Monitoring your competitors’ patent applications may provide insights about the technologies and improvements they are pursuing and how your competition may seek to prevent you from using that technology.

Correspondence between applicants and a patent office is often publicly available. From this correspondence, you can learn the patent office’s positions on patentability. Looking at your competitors’ responses to those positions provides insight into what aspects of inventions your competition deems important, giving you a window into their thinking.

Knowledge of competitors’ patent applications may allow you to amend your own applications either to block your competitors from using a technology or to prevent them from obtaining valid, enforceable patent rights that block you.

In many countries, if you know about your competitors’ patent applications, you may challenge or oppose those applications before they issue. In this way, you may prevent your competitors from receiving patents that block you from a potential or existing market, or at least delay those patents from issuing until you can find a way to work around them.

While it may not be appropriate in many cases, knowledge of the technology your competitors are pursuing allows you to approach a competitor at an earlier, potentially advantageous time. For example, you could approach a competitor to address potential infringement of your own patents, or to explore possible cross-licensing opportunities. Even if you do not have a patent portfolio, you can still explore licensing, acquisition or joint venture opportunities before a competitor realizes the full value of its as yet unpatented invention.

In most countries, trademark applications are publicly available. Thus, shortly after their filing you can learn the names, logos and slogans of interest to your competitors. Especially because marks are often descriptive of the products on which they will be used, this knowledge can provide you insight into your competitors’ marketing plans.

The geographic scope of your competitors’ trademark filings provides insight as to the competition’s level of investment or interest in the marks. The more a competitor has invested, the more aggressively it will defend a given mark and challenge similar marks. Such information also tells you where your competitors’ marketing efforts will be focused, allowing you to make informed decisions as to where to focus your resources.

In many countries, trademark applications are open to public challenge or opposition before the applicant’s registration becomes final. Thus, you can act early to try to prevent your competitors from obtaining registrations for marks that may damage your own brand and/or marketing strategy.

In many countries, trademark and patent licenses may be recorded, and often such licenses must be recorded. Monitoring such licensing recordings may provide insight into your competitors’ plans. For example, a competitor that has licensed unrelated third parties is probably not developing marketing or technology strategies around that IP but is likely seeking to generate an income stream from that IP. You can use such knowledge to develop your own marketing and technology strategies with a better idea of potential risks and costs.

Just as you can learn about your competition through monitoring IP filings and licenses, your competition can learn about you. Thus, you should consider crafting an IP strategy that, to the extent possible, will not provide insights into your technology and marketing focuses, or at least be aware of what you are telling your competition through your IP filings and licenses.

Goodwin Procter LLP is one of the nation's leading law firms, with a team of 650 attorneys and offices in Boston, New York and Washington, D.C. The firm combines in-depth legal knowledge with practical business experience to deliver innovative solutions to complex legal problems. We provide litigation, corporate law and real estate services to clients ranging from start-up companies to Fortune 500 multinationals, with a focus on matters involving private equity, technology companies, real estate capital markets, financial services, intellectual property and products liability.

This article, which may be considered advertising under the ethical rules of certain jurisdictions, is provided with the understanding that it does not constitute the rendering of legal advice or other professional advice by Goodwin Procter LLP or its attorneys. (c) 2004 Goodwin Procter LLP. All rights reserved.