This article was written by VARSHINI R.A. a 2nd year law student at Ramaiah College of Law, Bangalore
ABSTRACT
The fast-growing popularity of defensive publishing has forced IP enthusiasts to examine this grey area in depth. One is left to wonder if this technique used by many companies, would replace the need to obtain a patent for their innovation. This article aims at educating the readers on the same.
The article provides a bird’ s-eye view of what exactly is defensive publishing, how is it different from a patent, its advantages, and drawbacks, etc. The readers of this article can form their own conclusions and opinions based on the information discussed in this article. The primary objective is to provide full disclosure of each of these aspects.
Introduction
The vast expanse of IPR laws encompasses protection awarded to innovations, ideas, and thoughts that are a result of intellectual excellence. Patents have played a significant role in providing safeguards for such intellectual property. Patents have been a necessary tool for the growth and expansion of a company, which in turn leads to the growth of the economy as a whole. All inventions in the form of new products and services are subject to patent filing that guarantees legal protection.
Patent filling is not without its drawbacks. It is a pervasive excruciating process with complex procedures and detailed legal proceedings. The cost of just filling the patent let alone getting one is exorbitant, not many individuals or companies for that matter can afford such an expense. In some instances, a certain innovation may not meet the patentable criteria. In circumstances like these, innovators resort to a technical loophole to secure their innovation and prevent it from being duplicated without any legal consequences.
This technique is called ‘defensive publishing’ or ‘technical disclosure’. This technique is rapidly gaining popularity among innovators and is often used by companies as an alternative to acquiring a patent for their innovation.
What is a patent?
To understand the deeper nuances of what defensive publishing is and why is it replacing patents in the ever-changing legal environment, it becomes necessary to dive into the details of what exactly is a patent. Why is it necessary for an innovator to obtain a patent and what are its legal implications?
Indian laws define a patent as a statutory right for an invention granted for a limited period to the patentee by the government, in exchange for full disclosure of his invention for excluding others, from marketing, using, selling, or importing the patented product or process for producing that product for those purposes without his content.
The patent system in India is governed by the Patents Act, 1970 as amended by the Patent (Amendment) Act 2005 and the Patent Rules 2003. The patent rules are regularly amended in consonance with the changing necessities, the most recent being in 2016.
What can be patented?
An invention relating either to a product or process that is new, involving inventive steps, and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are nonpatentable under sections 3 and 4 of the act.
Rights encompassed.
A patent’s owners have the right to decide who may or may not use the patented invention for the period in which the invention is protected. The invention cannot be commercially made, used, distributed, imported, or sold by others without the patent owner’s consent.
Uses of innovations protected by patents.
Patenting an innovation is beneficial for the inventor as it provides incentives and protection by offering recognition for their creativity and the possibility of material reward for their ideas. Parallely the obligatory publication of patents facilitates the mutually beneficial spread of new knowledge and accelerates innovation activities among great and enthusiastic minds.
DEFENSIVE PUBLISHING
As discussed, the primary motive of obtaining a patent is to seek legal protection for its creation so that it cannot be commercially exploited by interested parties without any risk of infringement.
Defensive publishing is an upcoming concept with a secondary motive, that supports public awareness without actually obtaining a patent for the same. The main goal of the strategy is to keep the invention and advancements out of the hands of the competitors. Patent protection is sought for an invention that a company does not plan to exploit itself, but seeks protection just to prevent other companies from commercially exploiting it. The motivation is a negative one as it tends to restrict a competitor’s freedom of operation.
This strategy is mainly used by manufacturers who specialize in a particular type of product and over some time has become a mark of their identity. It can protect its holder in the following ways:
- The gamut of patents can be used as a defensive weapon against counterclaims.
- A firm’s negotiating position concerning the competitor’s can be strengthened.
- Used for defensive purposes when the competitor threatens the patentee in a related technological domain.
- To restrict the entry of potential applications in the technological domain.
- To provide freedom of operation.
- To obstruct market access to competing products.
When is defensive publishing better than obtaining a patent?
Though it is argued by many IP scholars and professionals that obtaining a patent is a safer option, there are circumstances when defensive publishing is the ‘viable’ option.
HIGH COSTS
The expenses of filling, attaining, and maintaining a patent are very significant, especially in cases of regular patent renewal payments in multiple jurisdictions. If the cost incurred in obtaining a patent outweighs the benefits of having one in the first place, disclosure can be considered a suitable alternative.
FAST MOVING INDUSTRIES
It is an utter waste of resources to obtain patents for fast-moving products that have a shelf life of less than a year. The technological sector is a good case in point. In the rapidly growing world of technology, designs and ideas tend to go obsolete within in few years. While some important components of the industry, like batteries and chip technology, have an extended shelf life that would necessitate and benefit from patent rights, there are numerous other consumer electronics in which patenting would be cost-efficient.
FIERCE COMPETITION
With globalization and an increased need to manufacture products that would please target consumers, companies are always at loggerheads to come up with new products that are better in terms of both quality and quantity, faster than their competitors. Obtaining a patent for each of these inventions could be extremely time-consuming going up to years at a stretch. Technical disclosure of an IP could throw a big part of the competitor’s strategy into disarray.
STRATEGIES
LOW-COST OPTION
It is well known in the world of business, if you want to pay less for a task you do it yourself. The same follows for this strategy as well. The lowest cost a company can pay for defensive publishing is by establishing an in house publication. A company news bulletin or a post that is viewed by the public at large is the simple solution.
With growing advancements in technology, it has become very easy to resort to webistes like Instagram, Linkedin etc for presenting an invention to the world. For a business formal approach a white paper, product brochure or a technical document can be used.
A classic example of in house publishing is set by the IBM group of companies. They published the IBM technical DISCLOSURE Bulletin that made technological disclosures available to lay men. And continue foster their policy of disclosure through their current operating website the ‘technical paper search’.
The only problem with this approach is that not many patent examiners review this type of document. Hence it may not always be cited by companies against competitors seeking their owm patents.
MODERATE COST OPTION
This method of publishing follows a more formal approach, such as an academic journal, or a technical publication etc. webistes like the IP.com and Reasearch disclosure is a centralized data base that is accessable to all IP users around the world.
Resorting to this kind of publication increases the likelihood of patent examiners to actually consider the disclosure especially when it comes to PCT appliactions before an International Searching Authority.
Documentation has always been necessary for filling or maintain a patent. The same is true even for defensive publishing and article 15(4) of the PCT, explains in detail the requsite fillings. Even the prestigious world intellectual property organization (WIPO) maintains a list of ‘minimum documentation’ source that includes industry and academic jornals and prior published material.
The drawbacks of publishing in a journal or technical publication is the cost and time that goes into the process. But the extra cost and effort is well warranet if the goal is to examined by a patent officer.
HIGH-COST OPTION
The costliest but the most effective way of making an innovation known to the world is by filling for an official patent. But the obvious question that would arise is the main purpose of defensive publishing not to fill for a patent? Isn’t there a difference between the two?
Filling a patent application serves a dual motive of creating a prior art document while also preserving the option to pursue a full fledged patent. If by chance the innovation picks up pace in the market, the applicant has the option to pursue a patnet. But if the technology fails, the applicant can easily allow the patent to lapse and would have still achieved the goal of having his innovation published.
This is a very clever and useful way of having your innovation known and at the same time have a wide variety of options available. However under any circumstance, it is always advisable to have a patent attory (in house or outside counsel) to avoid any bumps in the process.
DRAWBACKS OF DEFENSIVE PUBLISHING
While defensive publishing has its advantages, there are also drawbacks to consider:
- Limited Legal Protection: Defensive publications don’t provide the same level of legal protection as patents. No matter how effective a aperson my assume defensive publishing is, it will never be able to replace a patent. There have been instances, where courts have completely disregarded the preserance of a publication and laid immense emphaisi on the existence of a patent.
- Risk of Misinterpretation: it is an undeniable, if information is freely available misuse is an evident result. This is specifically true if this information is not legally protected. In case of any mishap the applicant will not be a position to claim in any legal recourse.
- Lack of Examination: Defensive publications is subject to no or minimal scrutiny as compared to patents. Patent examiners review applications for novelty, non-obviousness, and usefulness, providing a level of validation that defensive publications lack. The credibility of defensive publishing is comparatively very less as compared to patents for this exact reason. Patent officers have at many instances refused to even acknowledge the existence of a publication due to the reputation they have in the industry.
- Potential for Incomplete Protection: it has been made clear by many IP scholars that Defensive publishing in any way does not provide the same level of protection that a patent provides. The disclosures and documents that are necessary for filling a patent outwight the ones required for a publication, making patents the safer option. Certain nuances, variations, or improvements may not be adequately disclosed, leaving room for competitors to develop similar but non-identical solutions without infringing on the defensive publication.
Before opting for defensive publishing, it’s crucial for inventors and businesses to carefully weigh these drawbacks against the benefits and consider their specific goals and circumstances. In some cases, a combination of defensive publishing and patent protection may offer a more comprehensive strategy.
CONCLUSION
A defensive publication can’t quite replace the unique value of a patent application, especially for a crucial (or potentially game-changing) innovation. But the obvious advantages cannot be ignored. In many instances it has proven itself to be the only recourse available to small resource owners. Quick solutions is demanded in fast changing industries of technology and fashion and defensive publishing seems to be the answer. The cost incurred for short term innovation patents is not viable when a convenient option of publication is available.
Nevertheless, the drawbacks need to be equally emphasized. The legal protection a patent can offer can never be matched by mere publishing. It is always therefore advisable to consult with a patent attorney before making any decisions on the same.
REFERENCES
Online websites used as references
- NAME OF ARTICLE: Defensive Publications: A Cost-Effective Tool to Supplement Your Patent Strategy
The original article was written by realinemedia. The link is enclosed herein:
- NAME OF ARTICLE: India: Defensive Patents… Bombs For Future Business Battle!!
The original article was written by Mrinalini Gupta. The link is enclosed herein:
https://www.mondaq.com/india/patent/208990/defensive-patents-bombs-for-future-business-battle
- NAME OF ARTICLE: defensive publishing or patent application? Which works best.
The article was originally written by Steven Shape. The link is enclosed herein:
- NAME OF ARTICLE: defensive publishing
The article was originally published on Sagacious IP. The link is enclosed herein: