With the passage of America Invents Act (AIA) it has become very important for companies to put an effective patent monitoring mechanism in place. Since patents can be challenged even after they are being granted, it is important for companies to keep a vigilant eye on their respective domain to stay safe. With AIA a patent can be challenged within nine months of its issuance under PGR window period. With the Post Grant Review (PGR), a patent can be challenged virtually on any ground like subject-matter ineligibility, availability of existing prior art, (including prior use), for lack of written description, and/or lack of enablement and indefiniteness, thus there is a continuous obligation on patent holder to keep monitoring patents that may have an impact on their patent portfolio.
All we can say is that patent monitoring aids a company in defining and executing its business strategy in the market place and thus it should be implemented right at the initial stage. Without a comprehensive and full-proof patent watch mechanism it would be difficult for them to safeguard their rights.
Mode of Patent Monitoring- Depending on the need, a patent monitoring activity can be undertaken weekly, bi-weekly, monthly, or in a specified duration.
Various Elements of a Patent Monitoring Report
A patent monitoring report can be customized and its elements can be added or deleted as per the need of the company still, there are some essential elements those you can’t ignore. Here are those:
- Patent Prosecution Events of Rejections till date
- Office Actions
- Applicant Actions
- Examiner Behavior
- Family Extension Events
- Family Extension in other Geographies
- IPR/PTAB Decisions
- Sequence Listing (for applications containing disclosures of nucleotide and/or amino acid)
Benefits of Patent Monitoring
- Give regular updates about the latest patents in your preferred field of invention.
- Help clients keep a vigilant eye on competitors for their newest innovations in your field of interest by keeping note of any recent patent filings.
- Help companies identify business opportunities by performing quality analysis of the concerned patents
- Help companies know latest developments in the technology
- Help companies watch the Legal Status of desired patent applications
- Help companies identify abandoned/ rejected/expired patents in a particular domain
- Help companies determine areas of research or analyze the growth in a particular technology.
- Help companies keep a watch on the IP activity of their competitors and their future intent
Patent monitoring is something that can’t be ignored these days as the IP space is witnessing a sharp increase in number of litigations and oppositions. A miniscule error in your approach can be detrimental for your overall goal.