In an ideal world with unlimited resources and IP legal department budgets, all invention revelations would result in patent filings. However, this was not the case prior to the current COVID-19 pandemic. Moreover, the pandemic has only made many companies’ resources even more limited.
Separating the wheat from the chaff has always been a wise part of the invention harvesting process. Certain disclosures are simply insufficient to warrant the filing of a fresh patent application. Other revelations do merit a filing, and the question now becomes how robust a filing to draft and how broadly and aggressively to pursue it over time.
Is the investigation over when a decision is reached not to file an application? It does for the vast majority of businesses. Others, however, will consider preparing a “defensive publication” covering the disclosure.
What is a Defensive Publication?
A defensive publication is just what it sounds like: the publication of a disclosure that does not provide the publisher with patent protection but does offer defensive benefits, such as the formation of prior art against others as of the date of publication.
Patent prosecutors draft patent applications, not defensive publications. However, defensive publication can serve as a cost-effective way for firms or institutions to strengthen their IP protection. Further, they may also be seamlessly integrated into an already existing IP strategy.
A Single Size does not Fit All
Defensive publication can take different forms, ranging from informal (self-published materials) to formal (patent application-style materials). The formality and extent of the publication will be determined by the desired outcome and budget. For example, to contribute to the future establishment of freedom to operate in a specified technology area, a defensive publication that completely reveals and enables the technology will be more useful, but the publication does not need to be widely distributed. A defensive publication, on the other hand, might need to be more thorough and published in a place where a patent examiner is much more likely to discover and consider it in order to realistically prevent a competitor from acquiring patent protection.
Option with the Lowest Cost
Self-publishing is the least expensive form of defensive publication. This can be as simple as a publicly available company bulletin or website post. It could also be a more formal—but still self-published—document, like a brochure, white paper, or other technical document. IBM published the “IBM Technical Disclosure Bulletin” from 1958 to 1998, which made numerous IBM technology disclosures public. IBM now maintains a “Technical Paper Search” website to “provide the science community with access to technical documents written by IBM Research community members.”
This type of straightforward, self-published disclosure is at least hypothetically sufficient to assist future freedom to operate protection. However, because patent examiners rarely evaluate these documents, they are unlikely to be used against competitors attempting to obtain patents.
Option with the Moderate Cost
A more formal publication, such as one published through a prior art publication service, in a technical publication, or in an academic journal, is a moderate cost option. Prior art publication tools, such as XLSCOUT, and prior art publication services, like Research Disclosure, collate prior art in centralized databases that patent offices all over the world can access.
Relying on defensive publication of this type may boost the likelihood of patent examiner consideration, particularly for PCT applications submitted to an International Searching Authority. “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,” according to PCT Article 15(4). The term “documentation” in Article 15(4) refers to Rule 34(b), which defines “minimum documentation” as “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.” WIPO maintains a list of “minimum documentation” sources, which consists of industry publications, academic journals, and databases from organizations that provide prior art publication services and tools.
Academic journals or technical publications may necessitate a stringent publication process with a long and complex timetable, whereas prior art publishing services may necessitate only a modest charge for near-instantaneous publication. If the primary objective is to have a patent examiner consider the art, the extra effort and cost compared to self-publication may be justified.
Option with the Highest Cost
The most expensive option is to file a patent application. But wait, aren’t defensive applications and patent publications distinct? Also, the question arises should you go with defensive publication or patent? Both yes and no.
After 18 months, the patent application will be published and become prior art as of the patent application’s effective filing date. Filing a patent application accomplishes both the creation of a prior art document and the preservation of the option to seek patent protection. If the technology becomes unexpectedly valuable, the applicant will continue to be able to seek patent protection in the usual course of prosecution. However, if the technology remains low value but still core technology, the applicant may permit the patent application to lapse after publication, achieving the objective of defensive publication while avoiding future patent prosecution costs.
Should you Include Defensive Publication in your Patent Strategy?
Defensive Publication vs Patent
A defensive publication will never be able to replace the value of a patent application for a significant innovation. However, sometimes difficult decisions must be made. A defensive publication, when used tactically, can be a cost-effective method to supplement an existing IP strategy.
Defensive publication could be a valuable tool for safeguarding access to core technology without having to incur significant costs in such uncertain economic conditions, often reducing corporate IP legal budgets. When deciding whether to incorporate defensive publication into a larger IP strategy, there are numerous factors to consider.
Consider the Following Factors
The primary considerations are expenses and the future value of the technology. For example, if the costs of obtaining a patent are prohibitively high or if the patent will be difficult or prohibitively costly to enforce, a patent may not be an economically viable option. In other words, do the costs of patent enforcement and protection outweigh the benefits of patent protection? If this is the case, a defensive publication, rather than doing nothing, may be a useful tool.
Another critical factor to consider is the end objective of the defensive publication. Is the goal to ensure continued access to core technology? Is the goal, on the other hand, to limit a competitor’s ability to patent tech in a particular area? Or perhaps both? However, keep in mind that prior art generated by defensive publications can be a double-edged sword—depending on the circumstances. It may also present the publisher with future prior art challenges.
When determining whether a defensive publication is a suitable strategy, it is critical to weigh these factors. Making a defensive publication permanently releases the technology into the public domain. The publication will be considered prior art for all subsequent filed applications. Furthermore, making the technology public implies that a competitor may have a better and earlier understanding of your business. However, if the technology is core but has little monetary value as a potential patent, defensive publication could be a cost-effective method of contributing to future freedom to operate.