Monitoring other companies' intellectual property (IP) can play a valuable part role in competitive intelligence gathering. Data can be collected through publicly available databases such as IP application registers and then filtered, organised, analysed and acting upon.

Reviewing a competitor's IP registrations could give CFOs a good picture of the new technologies and products that a competitor is developing. Once a company has filed an application for a patent for a product, there is an 18-month blackout period before which the patent is published.

“A patent application will often only contain its title and the name of the applicant," says Ashley Newland, Managing Director and Patent Attorney, Calibre8. “This may give you an indication of what your competitors are working on, particularly if it's a big diversion from products the business normally produces. For instance, a firm may make baby products, and then all of a sudden register a patent for a dog toy."

Newland says often the patent application will have a generic name such as 'Dog toy' rather than something more specific such as 'Toy for pacifying a dog during thunderstorms', to reduce the risk of competitors trying to copy the product.

For instance, Newland is the inventor of the Scrubba Wash Bag, the world's smallest washing machine. The patent application he filed was for a generic laundry device, which didn't disclose detail about the product.

The front page of a patent application will typically include information about the company submitting it and about certain activities around the patent application that will reveal significant insights.

“It might include details of academics or inventors who have worked on the patent, so you can start building a picture of your competitor, who they are working with and if they are going into new markets," Newland explains.

Considering the next step

There are a number of actions CFOs can take if their business identifies that a patent published by a competitor or another party has potential commercial impacts.

Buying or licensing the technology is one avenue. Another option is to approach the competitor and work in partnership with it. A third option is to work out how to get the same result as the patent's underlying technology achieves, but without infringing the IP.

Newland suggests a combative approach may sometimes also be valid. “It's important to work out whether the patent infringes your IP or whether you want to go down the path of trying to invalidate their patent application through legal action, re-examination or opposition," Newland says.

The patent application will also indicate if the business is filing patents in emerging markets under a patent cooperation treaty (PCT). The PCT provides protection for the IP for an additional 18 months before the business makes a choice about the countries in which it intends to file a patent application.

“A PCT application is an indication the business is looking global," Newland explains. “Around thirty months after the initial application, you'll be able to tell which countries they are going into. If they file in lot of countries, you know it is valuable intellectual property to the business. Or, you might discover they are filing a lot of applications in Africa, for instance."

The business can make a strategic determination about how it intends to respond based on this information. For instance, a CFO and management team might decide to take defensive actions to protect its markets in Africa.

It is also a good idea to explore how many applications competitors are filing and how frequently, as well as how often they let applications lapse.

“All patent applications are a huge source of information and cite other patent applications. If your competitor has a patent application that is cited by a lot of other patent applications, it indicates they may be at the forefront of technology or they may hold a pivotal piece of data," Newland says.

If a business references its own patent applications, it may be an indication it has a good depth in its research and development program.

Trade marks the spot

Despite often just being a word or slogan, trade mark applications can also provide useful information, Newland says, adding that a business can glean a lot of insight about their competitor if that company files a new application under a class of goods and services they have never traded in before.

“However, just because a company includes goods or services in a trade mark application doesn't necessarily mean they will imminently trade in that good or service," he says. “When you file a trademark, you pay for each class you want to file under. But you can add as many goods and services that fall into the class as you like at no extra cost."

“So even though a business may only be interested in making dog toys in a particular class, they may go through all the other goods and services in the class and include anything they may produce in the future," he adds.

Even though the dog toy may be the most important part of the trade mark, that may be hidden among the other goods and services for which the business has filed the trade mark application. While companies may include a range of other goods or services in a trade mark application, these can be removed for non-use if they don't actually use the mark.

Says Newland: “It is never going to be clear cut, but with a bit of analysis you can get an indication about what the company is doing."

Analysing IP applications requires substantial skill and expertise and is the province of a patent attorney.

But this information can also provide valuable data for CFOs to help determine the future direction of the business and the new products and services on which it should be working, because it gives important insights into the market by revealing the state of competitor actions and IP.

Key Takeaways

• CFOs can learn a lot about what a competitor is working on, when that business files a patent application.
• The full application won't be published for 18 months or longer after it's submitted.
• The CFO and management team could select from various options in response to competitor's patent applications ranging from forming partnerships to legal opposition.