Best Practices Using Technical Disclosures
For clarity in instruction, we can roughly classify technical disclosure tactics in terms of where they occur in the IP life cycle. First, there are technical disclosures covering technology that a company has previously disclosed publicly but also informally, which means patent examiners may not have easy access to the information. Next are the technical disclosures covering previously undisclosed technology. The need to create a disclosure on these items becomes manifest at key points in a company's innovation management process. These disclosures can be further subdivided into categories relating to the internal business process from which they would originate. These processes include the invention review process, the patent application and prosecution process, and finally, the technology and business review.
As you no doubt guess or will soon see, the placement of each best practice into a single category or subcategory is an oversimplification, since many of them can originate from various stages in your invention process. It does, however, provide us with a starting point to discuss ways in which to integrate technical disclosures into your current IP strategy. Technical disclosures covering technology that a company has previously disclosed publicly
Since such technology is already in the public domain, the motivation for these tactics is largely to assist the overburdened examiner in locating your prior art. These are among the simplest yet most overlooked tactics. You have decided to place this information into the public domain, but by failing to publish it in a location searched by examiners you eliminate the single greatest benefit of your decision to disclose, while retaining one of the largest risks (i.e. preventing invalid patents from issuing).
Conference presentations and journal articles
Your company controls the flow of information to be released at industry trade shows, scientific conferences, etc. Before you even get to the convention the decision has already been made that the information in your presentation will be disclosed to the public.
As legal prior art, your presentation should prevent your competitors from getting patents related to innovations you present in your talk. However, patent examiners have only limited exposure to the information you present - they can't be at all the conferences, and even the conference proceedings are rarely indexed so as to be readily accessible. Unless you create a technical disclosure, it is unlikely that your legal prior art (i.e. your presentation) will be sufficient to stop your competitors from using your research to enhance their portfolios by obtaining patents on that same innovation (whether invalid or otherwise).
Sure, you can use your conference paper to support your invalidity defense at trial (or force a reexamination), but it will cost you: legal fees, innovators' time, injunctions, etc. But why incur that expense? What's more, you need to be sure you can prove in court that you presented the information at a particular conference on a particular day. Do you still have all your documentation from presentations given three years ago? Could you prove the date irrefutably? Most presenters don't and can't.
A much safer and easier approach is to publish your presentation materials in a technical disclosure to make sure that you can prove what you disclosed and when you disclosed it. This would come in very handy should you find yourself in court trying to invalidate a related patent. More importantly, examiners will have easy access to your disclosure to prevent competitive patents from interfering with your business.
Let's face it, your presentation has already been placed into the public domain. Publishing your presentation gives you the protection necessary to prevent others from unfairly capitalizing on your hard work. Protecting your freedom to practice is as simple as publishing your presentation as soon as it is approved (or at least one day before your presentation, just to be safe), being sure to include your abstract, your notes, and the presentation itself. Similar considerations apply to journal articles. Often, new information is disclosed in journal articles, but these are rarely searched by patent examiners due to the limited time available for each application, coupled with the everexpanding growth of potential content sources. By placing your article into a searchable database that is made easily available to patent examiners, you increase the odds of preventing a bad patent from being issued to a competitor utilizing your innovation.
Simple, inexpensive, but very valuable, technical disclosures can save a huge amount of effort and expense downstream for each piece of unpatented technology. Ask yourself, "Am I absolutely sure that this cannot be patented by my competitor to impede my freedom to practice, to slow me down or harm my business?" If not, you should publish.
Product descriptions and marketing literature
Products you make for public sale are obvious indicators of your innovation. By law, a product or service that is sold or offered for sale in the United States can serve as the basis for rejection of a patent application (i.e. prior art). But will patent examiners know of the existence of your product when determining the validity of a pending patent application? Further, marketing literature, product manuals, advertising material and so on often contain information about your technology, processes, and ideas that may not be covered by a patent.
From a practical standpoint, patent examiners do not have the time to scour the earth for relevant product information or product descriptions. Nor is there an easy means for them to do so, other than what gets published in the IP.com Prior Art Database.
Publishing the descriptions of your products and other related marketing material into a database that is searchable by examiners will ensure that examiners have meaningful access to your product or service descriptions. The result is an expanded region of protection around your products and innovations, which prevents competitors from acquiring new patents in your domain. Rather than risking millions in legal costs, lost market share due to preliminary injunctions, and potential losses in court, the prudent IP manager should be thinking, "By leveraging technical disclosures I can easily ensure my freedom to practice - what do I have to lose?" Needless risk can be avoided via the inexpensive publication of manuals, diagrams, and images, plus records of first sale or intent to sell, into one aggregated location for searching by patent examiners.
Legacy documents
Over the years, many products have come and gone, many conference presentations have been given, and numerous articles have been published. Of these, a fairly small percentage is indexed in such a way that patent examiners have a reasonable chance of finding them. Some of these are forever lost to cardboard boxes or to inoperative, out-of-date computer systems. These will be hard to find even if invalidation of a competitive patent becomes a business necessity. On the other hand, some of these can be located and re-disclosed so they can prevent the competitive patents before they are issued. A practical IP manager should not expect to unearth all of them, but they should secure the protection of a technical disclosure on all such legacy documents that can be found. In addition, if you have not implemented a technical disclosure program before, you probably have an archive of inventions neither disclosed to the public nor patented. Many of these inventions will exist because they had some potential utility to the inventor, therefore some potential utility to your company. Rather than allow these inventions to be wrongly patented by other companies in the future, they should be evaluated against your overall IP strategy to allow suitable documents to be published, thereby securing your freedom to practice that innovation.
With a small investment of time and energy, you can assure your freedom to practice in domains to which you are devoting significant amounts of research, development, and marketing efforts. Wouldn't it be better to be safe than sorry?
As you no doubt guess or will soon see, the placement of each best practice into a single category or subcategory is an oversimplification, since many of them can originate from various stages in your invention process. It does, however, provide us with a starting point to discuss ways in which to integrate technical disclosures into your current IP strategy. Technical disclosures covering technology that a company has previously disclosed publicly
Since such technology is already in the public domain, the motivation for these tactics is largely to assist the overburdened examiner in locating your prior art. These are among the simplest yet most overlooked tactics. You have decided to place this information into the public domain, but by failing to publish it in a location searched by examiners you eliminate the single greatest benefit of your decision to disclose, while retaining one of the largest risks (i.e. preventing invalid patents from issuing).
Conference presentations and journal articles
Your company controls the flow of information to be released at industry trade shows, scientific conferences, etc. Before you even get to the convention the decision has already been made that the information in your presentation will be disclosed to the public.
As legal prior art, your presentation should prevent your competitors from getting patents related to innovations you present in your talk. However, patent examiners have only limited exposure to the information you present - they can't be at all the conferences, and even the conference proceedings are rarely indexed so as to be readily accessible. Unless you create a technical disclosure, it is unlikely that your legal prior art (i.e. your presentation) will be sufficient to stop your competitors from using your research to enhance their portfolios by obtaining patents on that same innovation (whether invalid or otherwise).
Sure, you can use your conference paper to support your invalidity defense at trial (or force a reexamination), but it will cost you: legal fees, innovators' time, injunctions, etc. But why incur that expense? What's more, you need to be sure you can prove in court that you presented the information at a particular conference on a particular day. Do you still have all your documentation from presentations given three years ago? Could you prove the date irrefutably? Most presenters don't and can't.
A much safer and easier approach is to publish your presentation materials in a technical disclosure to make sure that you can prove what you disclosed and when you disclosed it. This would come in very handy should you find yourself in court trying to invalidate a related patent. More importantly, examiners will have easy access to your disclosure to prevent competitive patents from interfering with your business.
Let's face it, your presentation has already been placed into the public domain. Publishing your presentation gives you the protection necessary to prevent others from unfairly capitalizing on your hard work. Protecting your freedom to practice is as simple as publishing your presentation as soon as it is approved (or at least one day before your presentation, just to be safe), being sure to include your abstract, your notes, and the presentation itself. Similar considerations apply to journal articles. Often, new information is disclosed in journal articles, but these are rarely searched by patent examiners due to the limited time available for each application, coupled with the everexpanding growth of potential content sources. By placing your article into a searchable database that is made easily available to patent examiners, you increase the odds of preventing a bad patent from being issued to a competitor utilizing your innovation.
Simple, inexpensive, but very valuable, technical disclosures can save a huge amount of effort and expense downstream for each piece of unpatented technology. Ask yourself, "Am I absolutely sure that this cannot be patented by my competitor to impede my freedom to practice, to slow me down or harm my business?" If not, you should publish.
Product descriptions and marketing literature
Products you make for public sale are obvious indicators of your innovation. By law, a product or service that is sold or offered for sale in the United States can serve as the basis for rejection of a patent application (i.e. prior art). But will patent examiners know of the existence of your product when determining the validity of a pending patent application? Further, marketing literature, product manuals, advertising material and so on often contain information about your technology, processes, and ideas that may not be covered by a patent.
From a practical standpoint, patent examiners do not have the time to scour the earth for relevant product information or product descriptions. Nor is there an easy means for them to do so, other than what gets published in the IP.com Prior Art Database.
Publishing the descriptions of your products and other related marketing material into a database that is searchable by examiners will ensure that examiners have meaningful access to your product or service descriptions. The result is an expanded region of protection around your products and innovations, which prevents competitors from acquiring new patents in your domain. Rather than risking millions in legal costs, lost market share due to preliminary injunctions, and potential losses in court, the prudent IP manager should be thinking, "By leveraging technical disclosures I can easily ensure my freedom to practice - what do I have to lose?" Needless risk can be avoided via the inexpensive publication of manuals, diagrams, and images, plus records of first sale or intent to sell, into one aggregated location for searching by patent examiners.
Legacy documents
Over the years, many products have come and gone, many conference presentations have been given, and numerous articles have been published. Of these, a fairly small percentage is indexed in such a way that patent examiners have a reasonable chance of finding them. Some of these are forever lost to cardboard boxes or to inoperative, out-of-date computer systems. These will be hard to find even if invalidation of a competitive patent becomes a business necessity. On the other hand, some of these can be located and re-disclosed so they can prevent the competitive patents before they are issued. A practical IP manager should not expect to unearth all of them, but they should secure the protection of a technical disclosure on all such legacy documents that can be found. In addition, if you have not implemented a technical disclosure program before, you probably have an archive of inventions neither disclosed to the public nor patented. Many of these inventions will exist because they had some potential utility to the inventor, therefore some potential utility to your company. Rather than allow these inventions to be wrongly patented by other companies in the future, they should be evaluated against your overall IP strategy to allow suitable documents to be published, thereby securing your freedom to practice that innovation.
With a small investment of time and energy, you can assure your freedom to practice in domains to which you are devoting significant amounts of research, development, and marketing efforts. Wouldn't it be better to be safe than sorry?
