by Kathleen Kuznicki, Esq.
As businesses grow and develop, so do their intellectual property (IP) assets. And if these businesses are engaging in proper IP management, they are filing trademark and patent applications to protect their IP. However, because of the public nature of both trademark and patent prosecutions, one may get an inkling of their competitors’ business plans if they monitor these application filings. Though not a perfect way to predict the exact nature of your competitors’ future offerings, keeping track of IP filings can be a guide into what direction your competitors are moving.
A trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of goods and services. The United States Patent and Trademark Office (USPTO) allows entities to file trademark applications before the marks are in use under the Bona Fide Intent To Use basis. That way, businesses can secure their branding before their product or service offering is fully commercialized. Pending trademark applications are available online for public viewing in approximately a week or two after their submission. Using the online database, trademark applications can be searched using the owner name. For example, if you do a search using Microsoft as the owner, you will find numerous pending trademark applications; many of these filed under the Bona Fide Intent To Use basis. Some of these Bona Fide Intent To Use marks, such as Battle Toads, Eden Falls, and Screamride are being applied for as marks to cover video/computer games. This indicates the Microsoft may want to expand its footprint in the video/computer game market, with the word marks potentially indicating the nature of these games.
Another way to track competitors is to monitor their patent application filings. Entities apply for patents to protect inventions that they intend to become commercialized products. Before the America Invents Act (AIA), in the US inventors were the applicants for patents and assignments were not always recorded with the USPTO, as they were not required. However as of September 16, 2012, the AIA allows assignees to be applicants, bringing the US in line with the rest of the world. Because of this, potentially more businesses have their names on patent applications. The USPTO and other databases allow you to search patent applications by assignee (or applicant) name. The caveat, however, is that patent applications are not published until 18 months from their priority date. So, there is a blackout period where applications are confidential and not able to be found on the patent databases. But, as it takes approximately three years in the US before an application becomes an issued patent (or becomes abandoned), it is still possible to track your competitors’ developing products, especially because it may take several years before a commercialized version of the invention is finalized and put up for sale.
Businesses should either set up internal procedures to track their competitors’ IP filings, or if they can afford it, outsource the tracking to companies who specialize in tracking IP. Tracking your competitors’ IP not only lets you know what your competitors are up to, but may also be guide to direct your business’ product development. You can assess quality of your competitors’ potential products and can compare to your current and potential products, assess whether the market will be too crowded for a certain type of product (too many patent applications filed on similar inventions), or assess whether one of your developing products could potentially be infringing the claims in a competitor’s application, which may ultimately issue as a patent, allowing you to “design around” your competitor’s invention.
Kathleen Kuznicki is a contributing writer to Exit Promise. Please visit www.exitpromise.com to view more articles by Kathleen.