Businesses and researchers know patents are ‘strong’ intellectual property rights (IPR). An inventor gains monopoly rights in the patented technology. Once you patent a technology, you can stop others from using it for a certain period. As most people want patents for their invention, the procedure is complex and costly. But not everyone has the resources to patent an invention. And, not everyone likes the monopoly rights of an invention. Some might want to prevent others from getting a patent. Yet, some others might want to disclose a patent-worthy idea for the public good. A practical option for such strategies is defensive publications. This article discusses what defensive publications, some examples, and their modes are.
What is a defensive publication?
A defensive publication is a way of disclosing an invention to the public by making it a prior art. It is a form of IP to prevent competitors from getting a patent. Prior art is any reference to an invention available to the public before the date of the patent application. Describing your invention through defensive publications allows the public to practice it. Other names for such publications are research disclosures and technical disclosures.
You may publish an invention disclosure in any form. These can be a research paper in a journal or as an internal document in your company. In these cases the description should contain complete information.
Defensive publication vs. patent
The common link between patents and defensive publications is the novelty criterion. For any invention to receive a patent, it has to be new over the existing technology. You can break the novelty of a similar patented invention with a defensive publication. Thus you can challenge a patent if there was an earlier defensive publication. But some might call defensive publications the arch-nemesis of patents. Except for the novelty aspect, there are some differences between the two as well:
You can publish an invention to deter someone from patenting a similar invention. By doing so, you are also disclosing the invention to the public. So anyone can use the disclosed invention. In contrast, a patent is to get monopoly rights of an invention for a certain period. Others cannot make, use, sell or import the invention without its owner’s permission.
Patenting process is complex and uses strict examination. IP offices go through extensive literature to inspect the newness of the invention. Criteria for getting a patent are also stringent. So inventions that do not qualify for a patent may be eligible for a defensive publication.
The cost to file, maintain and prosecute for a patent is usually high in any part of the world. Defensive publications offer a cheaper alternative to patents.
You can block competitors from using your invention for 20 years with patents. But, with defensive publications, you can disclose your research for public use. Anyone can make use of the knowledge that a defensive publication discloses. Thus these are two different IP approaches to block your competition.
One can file a patent lawsuit if someone else makes use of patented inventions. Using patented inventions without permission is an infringement. Firms such as Marathon Patent Group (MARA) earn millions of dollars through successful patent lawsuits. But companies may also use defensive publications for maintaining a monopoly. They may publish technologies to ensure that others do not meet the criterion to get a patent. This way, competitors may not get a patent, and the company retains control of the invention.
Example of the use of defensive publications
When you use defensive publications, you form prior art for an invention that is yet to receive a patent. Patent examiners will be able to cite the publication as prior art to deny grant of patent. Here are some examples that show how defensive publications came in handy in some cases:
A popular example is that of the famous Indian spice turmeric. Activists in India challenged the award of a patent to some products based on turmeric in the USA. India has used turmeric and its derivatives for many centuries. This knowledge is considered part of India’s traditions. This urged the USPTO to revoke the patent by citing earlier traditional usage of those products.
IBM made extensive use of the “IBM Technical Disclosure Bulletin.” These enabled IBM to disclose its technology to the public. IBM replaced the bulletin with the “Technical Paper Search” site. Anyone can go to the website and access research publications that IBM’s research community members have written.
How to publish technical disclosure ?
There are two modes through which one can disclose information in a defensive publication. One is that the author, through their organization, publishes the work. The other is that the author uses a third party for publishing the work. Various channels fall into these categories:
An advantage of publishing through your organization is that you have control over the form and timing of the disclosure. Companies use press releases, website articles, and internal documents to make public disclosures. Like IBM, Xerox and Siemens also use their disclosure journals.
An area of publishing information but with ambiguity is gray literature. Companies may hand out technical disclosures in the form of flyers, leaflets, and other such media. Gray literature has lesser efficiency since it is hard to date such material. Usually, brochures and pamphlets are not dated. Thus the date of publishing remains vital for a defensive publication.
Publishing through a Third-party:
Self-published articles may not be valid prior art due to non-verifiable dates. Thus the whole point of a defensive publication can go in vain. To overcome this drawback, you may choose to publish your invention through a third party. Third-party publications can be reliable and can help establish a publishing date. Moreover, a patent examiner can cite them as prior art. But these advantages come at a cost. Third party publishers have control over when and how it publishes the information. And most publishers will charge a fee for processing your publication. Some channels of publishing through third parties are:
Commercial journal publishers:
Some journals publish articles at regular intervals of time. E.g., the journal Research disclosure is a monthly. You can submit an invention disclosure and in any language to this journal.
IP.com is yet another platform, but it requires publishers to pay a fee. It publishes disclosures online as well as in print. Technical Disclosure Commons is yet another collection of technical disclosures.
Scholars in the field of invention review articles for quality and scientific assessment. These articles thus take longer and depend on review by experts. Oral or poster presentations in conferences are other ways of publishing. But, it may be challenging to establish the publication date for unknown conferences.
Many countries have regional journals in which you can publish research. The US had a provision of publishing disclosures as Statutory Invention Registration (SIR). SIRs were technical disclosures of patent applications. Then, the applicant abandoned the rest of the patenting procedure in exchange for SIR. SIRs restricted others from obtaining patents on the published idea. But, the USPTO repealed SIR on the introduction of the America Invents Act.
Defensive publications are an effective strategy to gain an advantage over the competition. By disclosing the entire invention you can prevent competitors from patenting it. The date of publication is a vital aspect in defensive publication. Publish the invention if you cannot gain an advantage by patenting it.