Defensive Publications: A Cost-Effective Tool to Supplement 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.”

Defensive publications - https://depositphotos.com/13795110/stock-photo-army-tank.htmlIn 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.

Image Source: Deposit Photos
Author: realinemedia
Image ID: 13795110 

The Author

Richard Coller III

Richard Coller III is a director in Sterne, Kessler, Goldstein & Fox’s Mechanical & Design and Trial & Appellate Practice Groups.

For more information or to contact Richard, please visit his Firm Profile Page.

Richard Coller III

Alexander Covington is an associate in Sterne Kessler’s Mechanical & Design Practice Group.

For more information or to contact Alexander, please visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments. Join the discussion.

  1. MaxDrei May 25, 2020 9:28 am

    From the article I almost overlooked something which, in today’s fast-moving small world strikes me of immense importance. Not just me but the whole of Asia, since the AIA came into force. I speak of the 18 month back-dating effect of writing a PCT application and letting it run through to WO publication. Its prior art effect at the USPTO, for both novelty and obviousness attacks, can reach back to its priority date 18 months before its WO publication, whereby it is as if it were published on its priority date.

    Then there’s the flexibility of the beast. Depending how the market develops, in the year after WO publication, you can change your mind and take it on into the national phase, in the USA or all over the world, as you please. If not, just drop it, having paid only filing and search fees but pretty much no other costs. Its prior art effect lives on unaffected.

    Mind you, that turbocharged prior art effect works only in the USA. Thanks to the AIA.

  2. Anon May 25, 2020 10:04 am

    Interesting article — thank you for the $ driven perspective.

  3. Anon May 25, 2020 1:53 pm

    whereby it is as if it were published on its priority date.

    I am not seeing the issue here to which you appear to want to draw attention to.

    you can change your mind and take it on into the national phase, in the USA or all over the world, as you please.

    Again, this is not an entirely new concept in US Sovereign patent law. You may recall past discussions of the US ‘secret prior art’ and the related consequences of the (universally) prior, but still available Non-publication request that gives the applicant herself the power to have their own item “be” prior art — as of the date of its filing to reflect to the juristic person of PHOSITA on the date of filing — or at any time during prosecution and prior to issuance, abandon the application and make its contents as if they never existed.

    This of course aligned with the US Sovereign’s particular Quid Pro Quo.

    If anything, it has been the NON-US taint and different exchange that has ‘poisoned the well,’ with the much more meager exchange of mere possibility of patent for publication as opposed to the US exchange of actual grant for publication.

    Applicants have always had the option of publishing outside of the patent system. What has happened with the insertion of ‘forced publishing’ IN the patent system is an entirely different animal.

    This is also why my standing advice to all clients is to file with non-publication requests and at an appropriate time review that decision and see if the non-publication requests either needs to be, or is desired to be, rescinded.

    The ‘culprit’ here is far less the AIA (even as that vehicle has its share of loathsome changes), and far more the ‘tweaking’ of the US Quid Pro Quo as an accommodation of deals elsewhere in the world.

  4. MaxDrei May 25, 2020 5:43 pm

    You say you are “not seeing the issue”, and yet you purport to be a patent attorney, anon. You amaze me.

    The issue is that in a First to File world, exclusive rights go to the first to file. If you are anybody other than the first to file you might well find down the line that you are held to infringe the patents held by that first filer.

    So what does one do to protect oneself against that nightmare eventuality, aside from yourself filing on everything? Why publish, of course, so that your early date publication will render your rival’s claims old or obvious.

    But publication immediately hands on a plate to your competitors an enabling disclosure of your valuable new and inventive contribution to the art, giving them a flying start to their competition with you. Wouldn’t it be nice not to publish anything until 18 months later but have it deemed to be “backdated”, upon publication, to a deemed date of publication, 18 months earlier, for this deemed date of publication would in all likelihood be a date earlier than your competitor’s PTO filing date? This is the turbo-charged prior art effect which, under the AIA, a simple WO publication (anywhere in the world) achieves.

    Mind you, only in America, thanks to the AIA’s turbo-charged, USA-unique, FItF patentability provisions.

    Have you got it now? The Chinese have had it for some years now, the Japanese and the Koreans already in the 1970’s.

  5. Anon May 25, 2020 8:38 pm

    My ‘not seeing the issue’ is with YOU bringing up what is common knowledge.

    Patent attorney? I am most definitely.

    You? Most likely not.

  6. Poulomi May 26, 2020 1:38 pm

    Defensive publication may prohibit to protect the idea, which can not be patented, through confidentiality agreements. Any comments on this?

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