“A defensive publication can never replace the value of a patent application for an important (or potentially important) innovation. But sometimes tough choices have to be made. When used strategically, a defensive publication can be a cost-effective way to complement an existing IP strategy.”
In a world of unlimited resources and intellectual property (IP) legal department budgets, all invention disclosures would lead to patent application filings. But this was not the world we lived in prior to the current COVID-19 pandemic, and the pandemic has only further constrained resources for many companies.
Separating the wheat from the chaff has always been a prudent part of invention harvesting. Certain disclosures simply do not merit the filing of a new patent application. Other disclosures do merit a filing, and the question then becomes how robust of a filing to draft and how widely and aggressively to prosecute it over time.
When a decision is made not to file an application, does the inquiry end there? For most companies it does. But others will consider preparing what is known as a “defensive publication” covering the disclosure.
A defensive publication is exactly what it sounds like—a publication of a disclosure that provides no patent protection to the publisher, but which can provide defensive benefits, such as the creation of prior art against others as of the publication date.
Defensive publications are an often-overlooked tool—patent prosecutors draft patent applications, not defensive publications! But when used properly, defensive publications can be a cost-effective way to bolster IP protection for innovative companies or institutions, and they can also be easily integrated into an existing IP strategy.
One Size Does Not Fit All
Defensive publications can take many forms, from informal, self-published publications to formal, patent application-style publications. The required extent and formality of the publication will vary based on the desired outcome and budget. For example, to contribute to establishing freedom to operate in a given technology area in the future, a defensive publication that fully discloses and enables the technology will be of greater use, but the publication need not be widely disseminated. In contrast, to realistically be likely to prevent a competitor from obtaining patent protection, a defensive publication may need to be more detailed and published in a place that a patent examiner is more likely to find and consider it.
Lowest Cost Option
The lowest cost defensive publication is a self-published publication. This can be as simple as a company bulletin or website post that is publicly available. Or it could be a more formal—but still self-published—document, such as a white paper, product brochure, or other technical document. From 1958 to 1998, IBM published the “IBM Technical Disclosure Bulletin” that made various IBM technology disclosures publicly available. Now IBM maintains a “Technical Paper Search” site to “to provide the scientific community with access to technical reports written by members of the IBM Research community.”
This sort of simple, self-published disclosure is at least theoretically sufficient to support future freedom to operate protection. But patent examiners rarely review these types of documents, so they are unlikely to be cited against competitors seeking their own patents.
Moderate Cost Option
A moderate cost option is a more formal publication, such as one published using a prior art publishing service, in an academic journal, or in a technical publication. Prior art publishing services, such as IP.com and Research Disclosure, aggregate prior art in centralized databases that are accessible by patent offices around the world.
Relying on this type of defensive publication may increase the likelihood of patent examiner consideration, especially for PCT applications before an International Searching Authority. Under PCT Article 15(4), “The International Searching Authority . . . shall endeavor to discover as much of the relevant prior art as its facilities permit, and shall, in any case, consult the documentation specified in the Regulations.” The “documentation” under Article 15(4) refers to the “minimum documentation” defined by Rule 34(b), which includes “such other published items of non-patent literature as the International Searching Authorities shall agree upon and which shall be published in a list by the International Bureau when agreed upon for the first time and whenever changed.” The World Intellectual Property Organization (WIPO) maintains a list a of “minimum documentation” sources, which includes academic journals, industry publications, and databases from prior art publishing services.
Academic journals or technical publications may require a rigorous publication process with a lengthy timetable, but prior art publishing services may require only a small fee for publication that is near instantaneous. The extra cost and effort compared to self-publication may be warranted if the goal is to have a patent examiner consider the art.
Highest Cost Option
The highest cost option is to file a patent application. But wait, aren’t patent applications and defensive publications different? Yes and no.
After 18 months, the patent application will publish and become prior art as of the effective filing date of the patent application (with certain caveats, depending on the jurisdiction internationally). Filing a patent application serves the dual purpose of creating a prior art document while also preserving the option to pursue patent protection. If the technology unexpectedly becomes more valuable, the applicant will still have the option to pursue patent protection in the normal course of prosecution. But if the technology remains low value, but still core technology, the applicant may allow the patent application to lapse after publication, still achieving the goal of having the defensive publication while cutting off future patent prosecution costs.
And of course, different types of defensive publications may be used in conjunction. For example, a patent application may be filed just before a self-published publication, an academic journal, or a technical publication. In this way, the defensive publication becomes prior art as a printed publication immediately under the laws of all jurisdictions.
Also, under the low, moderate, or high cost options, it may make sense to have in-house or outside counsel patent attorney spend a reasonable amount of time reviewing and enhancing the disclosure prior to publication to enhance its protective effects down the road.
Should Defensive Publications Be Part of Your Patent Strategy?
A defensive publication can never replace the value of a patent application for an important (or potentially important) innovation. But sometimes tough choices have to be made. When used strategically, a defensive publication can be a cost-effective way to complement an existing IP strategy.
And in these uncertain economic times and often shrinking corporate IP legal budgets, defensive publications may be a valuable tool for protecting access to core technology without incurring significant costs. There are, however, several factors to consider when deciding whether to integrate defensive publications into a larger IP strategy.
Costs and the future value of the technology are primary considerations. For example, if the costs to obtain a patent are too high or the patent will be challenging to enforce or excessively expensive to enforce, a patent may not be an economical option. In short, does the cost of patent protection and enforcement outweigh the value of patent protection? If so, a defensive publication—as opposed to doing nothing—may be a useful tool.
Another important consideration is the ultimate goal of the defensive publication. Is the goal to ensure continued access to core technology? Or is the goal to limit a competitor’s ability to patent technology in a specific area? Or both? But remember, prior art generated by defensive publications can be a double-edged sword—depending on the circumstances, it may present prior art hurdles to the publisher in the future too.
Weighing these considerations is important when deciding whether a defensive publication is an appropriate strategy. Creating a defensive publication irreversibly puts the technology in the public domain. The publication will be prior art against all later filed applications. And putting the technology in the public domain means a competitor may have more and earlier insight into your own technology and business strategy. However, if the technology is core technology, but has low monetary value as a potential patent, a defensive publication may be a cost-effective way to contribute to future freedom to operate.
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