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
Opting for the most budget-friendly defensive publication entails creating a publication in-house. This could be something as straightforward as a company bulletin or a publicly accessible website post. Alternatively, it might take the form of a more structured, yet still self-published, document like a white paper, product brochure, or another technical piece. An illustrative example is IBM’s “IBM Technical Disclosure Bulletin,” which, from 1958 to 1998, disseminated various IBM technology disclosures to the public. Presently, IBM maintains a “Technical Paper Search” site, offering the scientific community access to technical reports crafted by members of the IBM Research community.
While this basic, self-published disclosure theoretically provides ample support for future freedom to operate protection, it’s essential to note that patent examiners seldom scrutinize such documents. Consequently, the likelihood of them being referenced in the patent examination process, especially by competitors pursuing their patents, is low.
- MODERATE COST OPTION
An option with a moderate cost involves opting for a more formal publication, such as one facilitated through a prior art publishing service, in an academic journal, or a technical publication. Services like IP.com and Research Disclosure, categorized as prior art publishing services, bring together prior art in centralized databases that are accessible to patent offices worldwide.
Choosing this type of defensive publication can enhance the chances of consideration by patent examiners, particularly for PCT applications before an International Searching Authority. According to PCT Article 15(4), the International Searching Authority is tasked with making efforts to discover relevant prior art within its capabilities and consulting specified documentation. This “documentation” includes the “minimum documentation” outlined in Rule 34(b), encompassing published items of non-patent literature agreed upon by International Searching Authorities. The World Intellectual Property Organization (WIPO) maintains a list of sources for “minimum documentation,” comprising academic journals, industry publications, and databases from prior art publishing services.
While academic journals or technical publications may involve a rigorous publication process with a lengthy timeline, prior art publishing services might only require a small fee for near-instantaneous publication. The additional cost and effort, when compared to self-publication, may be justified if the aim is to have a patent examiner carefully consider the art.
- HIGH-COST OPTION
The priciest route involves filing a patent application. The apparent question is, “Aren’t patent applications and defensive publications two different things?”
The answer would be, that after 18 months, the patent application gets published and takes on the role of prior art as of the effective filing date (with a few nuances depending on international jurisdictions). Filing a patent application does a neat two-in-one by creating a prior art document while keeping the door open to pursue patent protection. So, if the tech unexpectedly skyrockets in value, the applicant can still choose the patent protection route in the usual process. On the flip side, if the tech’s value stays low but remains a core part of the technology, the applicant might let the patent application lapse after publication, achieving the goal of a defensive publication while cutting off future patent prosecution costs.
the interesting and intriguing part is this—different types of defensive publications can team up. Picture this: filing a patent application right before a self-published piece, an academic journal entry, or a technical publication. This way, the defensive publication instantly transforms into prior art as a printed publication, covering all legal bases across jurisdictions.
Oh, and regardless of whether you’re going for the low, moderate, or high-cost options, it might be a smart move to have an in-house or external counsel patent attorney dedicate some quality time to review and enhance the disclosure before publication. This extra effort can amp up its protective effects down the road.
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. They serve as prior art, making information publicly available, but they don’t grant exclusive rights to the inventor. Competitors can still use the disclosed information without facing legal consequences.
- Risk of Misinterpretation: When information is publicly disclosed, there’s a risk that others may misinterpret or misuse it. This can lead to unintended consequences, such as the misapplication of technology or the development of competing products that were not originally anticipated.
- Lack of Examination: Defensive publications typically do not undergo the same rigorous examination process as patent applications. Patent examiners review applications for novelty, non-obviousness, and usefulness, providing a level of validation that defensive publications lack. This means that defensive publications may not be as credible or reliable in the eyes of the industry.
- Potential for Incomplete Protection: Defensive publishing may not cover all aspects of an invention comprehensively. 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.
- Limited Strategic Value: Defensive publications may not deter determined competitors from pursuing their patents. Competitors may still choose to patent improvements or variations, especially if they believe there is commercial value in doing so.
- Resource Intensity: Creating and managing defensive publications can still require time and resources. While less costly than pursuing a patent, there are still associated expenses, and the process may divert attention and resources from other business priorities.
- Global Variability: Defensive publications may not have the same impact in every jurisdiction. Patent laws and regulations differ globally, and the effectiveness of defensive publications may vary depending on the legal landscape of each jurisdiction.
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. Nevertheless, there are moments when tough decisions come knocking. When approached strategically, a defensive publication can be a savvy and cost-effective addition to an existing IP strategy.
Amid today’s uncertain economic landscape and the often shrinking legal budgets of corporate IP departments, defensive publications emerge as a valuable tool. They offer a means to safeguard access to core technology without the burden of hefty costs. Still, it’s not a one-size-fits-all solution, and there are key factors to mull over when contemplating the integration of defensive publications into a broader IP strategy.
At the forefront are the costs involved and the future value of the technology in question. Take, for instance, situations where obtaining a patent seems too pricey or enforcing it is a formidable challenge. Does the cost of seeking patent protection and its enforcement outweigh the actual value it brings? If the scales tip unfavorably, opting for a defensive publication, as opposed to doing nothing, might emerge as a pragmatic move.
Another pivotal consideration revolves around the endgame of the defensive publication. Is the aim to secure ongoing access to core technology? Or is it about curbing a competitor’s ability to patent technology in a specific domain? Perhaps both? It’s worth noting, though, that prior art stemming from defensive publications can be a bit of a double-edged sword. Depending on the circumstances, it might pose hurdles for the publisher in the future as well.
Balancing these considerations becomes crucial when determining the appropriateness of a defensive publication strategy. It’s a decision that, once made, puts the technology squarely in the public domain. The publication becomes prior art against all later-filed applications. This exposure means that competitors could gain more and earlier insights into your technology and business strategy. However, if the technology is at the core but lacks substantial monetary value as a potential patent, a defensive publication could emerge as a reasonable and cost-effective way to contribute to future freedom to operate.
REFERENCES
Online websites used as references
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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:
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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:
https://sagaciousresearch.com/blog/defensive-publishing/