Staying Ahead of the Game: IP Surveillance


While you are sure you have the next greatest idea ready to be produced, someone may have already beat you to it. That’s where patent databases come in. Patent attorney for Wadeson, Ben Mott explains their value.



The world’s patent systems are predicated on the notion of innovators publishing the details of their new products and processes in return for a limited term monopoly. Millions of patent applications are published every year, forming a vast body of technical information that you can use to stay ahead of your competitors.

Traditional patent searches fall into two categories – “patentability searches” (AKA novelty searches) and “infringement searches” (AKA freedom to operate searches and clearance searches).

Patentability searches do a great service for saving time and money on patent applications. Generally speaking, to qualify for patent protection a product (or process) must not be publicly known when the initial patent application is filed. Patentability searches are searches for published documents showing identical or similar products or processes to obtain an indication of patentability before filing patent applications.

The patent databases are usually the primary source of information during patentability searching. These databases are extensively indexed so that they can be efficiently searched. Patents typically include clear and comprehensive descriptions of the products and processes they cover.

During a patentability search the disclosures of the earlier patents and patent applications are considered; the coverage of the located documents is not particularly relevant.

During infringement searching the coverage of the located patents and patent applications is the central issue. Infringement searching is conducted to identify any patents or patent applications that might be infringed by a proposed product or process.

Beyond traditional searching, the patent databases are a great way to keep an eye on your competitors and the latest developments in your industry. A simple example is watching the patent filing activities of your key competitors.

By watching your competitors’ patent filing activities you can find out what they are working on, often well before the rest of the market, and also identify potentially problematic patent applications. Early identification of potentially problematic patent applications can save vast amounts of money. Imagine building a production line to suit a new product, only to discover that selling the product would infringe a competitor’s valid patent.

Early identification of potentially problematic patent applications gives you a range of options. For example, if it appears likely that the competitor does have a valid patent position, you might choose to invest elsewhere instead of building the production line. If it seems unlikely that the competitor has a valid patent position, you can take advantage of various low cost options to ensure that no problematic patents are granted on the applications. These low cost options can be as simple as supplying to the Patent Office a copy of an earlier publication showing details of the competitor’s alleged invention. In contrast, if left until later, going to Court to challenge the validity of a granted patent can require spending 6 or 7 figures.

Watching the patent databases for patent applications directed to a particular technology is a great way to stay informed of recent developments in the technology. It also maximizes your return on research and development investment by ensuring that you are not re-inventing the wheel.

By way of example, instructing a patent searcher to provide an agreed number of recent patent applications every quarter to be reviewed by your engineering team as part of their regular workflow would be a low-cost approach to staying current in a developing technology. A side benefit of this approach is the development of your team’s understanding of the patent system which typically leads to enhanced capturing of your own intellectual property.

The registered design and trade mark databases are also vast sources of up-to-date information that can be mined in a similar fashion. Like the patent databases, these databases can be watched for commercial intelligence and for potentially problematic competitor rights. By way of example, your competitor applying to register the trademark “XYZ 600” would be a clear indication that this is one of many enhancements in their product line. Thus, you’ll know not to spend any more time on your own version of “XYZ 200.”

AlleyWatch note: The materials on this website are provided for informational purposes only and do not constitute legal advice.

About the author: Ben Mott

Ben Mott is a Principal at Wadeson, a patent law firm base in Melbourne, Australia. Mott combines his patent knowledge with his real world experience as a mechanical engineer to aid businesses new to patent systems.

You are seconds away from signing up for the hottest list in New York Tech!

Join the millions and keep up with the stories shaping entrepreneurship. Sign up today.