A patent watching search is a check made at frequent intervals through relevant Official Journals or computer databases for newly published granted patents or pending patent applications appropriate to the requirements you specify.
Why are patent watching searches useful?
Depending on the type, they:
- enable you to monitor the patenting activities of others in your particular technical field and to keep abreast of technical developments,
- enable you to monitor the patenting activities of specific companies or individuals, e.g. competitors,
- enable you to identify and monitor potential patent infringement risks at an early stage,
- enable you to identify and monitor other people’s patent applications which you may wish to challenge in opposition,
enable you to get the most out of the patent system as being a valuable source of technical information. Time and money spent on research and development can often be wasted because of lack of knowledge of the state of the art in a particular technical field.
Types of watching search available
Typically a patent watching search will be carried out according to one of the following two main strategies:
1) By subject matter
This type of watching search looks for any newly published patents or patent applications in a particular technical subject matter field, usually restricted to the major countries of technical interest.
The technical breadth of this sort of watch may need to be chosen carefully, and we would normally expect to discuss this with you before commencing.
This type of watching search enables you to keep abreast of developments in a selected field of interest and especially enables you to see what possible competitors are up to.
It is also valuable for identifying at an early stage potential patent infringement risks which could affect your future commercial activities.
2) By proprietor/applicant name
This type of watching search looks for any newly published patents or patent applications in the name of one or more specific companies or individuals, and often can be done cost effectively without being limited to one or more particular countries.
This sort of watching search can be useful as a means of monitoring the patenting activities of specific competitors or people known to be active in a particular technical area.
Again, it can also be valuable for identifying at an early stage potential infringement risks associated with specific third parties.
Note: Since both of the above types of watching search rely on data concerning published patents or patent applications, such searches cannot provide information about items which are as yet unpublished. In particular, since in most countries pending patent applications are normally not published for the first time until 18 months from the initial filing or priority date, there is inevitably a delay of at least that length of time in being able to find out about new existing patent applications.
Other types of watching search
There are various other types of patent watch which can be set up and which may be useful for certain purposes.
For example, once a published patent application of interest has come to light, its progress through the Patent Office examination can be followed.
Since patent applications frequently undergo amendment during examination, a third party patent application which appears to be an infringement risk early on may not necessarily remain as such once it is granted, so monitoring the progress of the application enables you to monitor any risks as the application progresses.
Another useful purpose of watching searches on patent applications is to be able to be informed when an application gets to a particular stage in its progress at which it becomes available for opposition, for example if you have grounds for challenging it for non-patentability.
How much do patent watching searches cost?
The cost depends upon the type of watching search in question, and the breadth of coverage, e.g. subject matter area, number of countries being watched. Examples of two main types mentioned above are:
- A typical subject matter patent watching search monitoring patent publications from the UK, the European Patent Office and International Patent applications (PCT) may cost in the region of £1000 to £1600 (+VAT) per year, including the supplying of abstracts of items found.
- A typical name patent watching search monitoring new patent publications in the name of a competitor will usually cost in the region of £300 to £600 (+VAT) per name per year, again including the supplying of abstracts, and covering most industrially important countries of the world.
In either case, the obtaining of copies of full published specifications, checking the legal status of patents or applications found in the search, will incur additional costs. We normally expect to provide a cost estimate in advance of setting up any patent watching search, once your requirements are known and we have also had an opportunity to discuss those requirements and possibly the strategy with you.
Please contact us for further information on patent watching searches and/or costs involved.
This information is simplified and must not be taken as a definitive statement of the law or practice.