Getting Started With Technical Disclosures
It should be obvious by now that technical disclosures are something you need to start utilizing. But where do you begin? With so many possible approaches, coupled with your limited resources, it may seem to be a daunting task. You need to consider which tactic(s) will provide you with the greatest value for the least effort.
Check off the easy tactics
If you've never utilized technical disclosures before, it's clear that you'll need to make some changes in order to integrate these new methodologies into your existing processes. This doesn't, however, mean that it will take a long time to start utilizing the power of technical disclosures. Luckily, there are some tactics that are easy to implement, require little or no additional processes, and yet provide substantial benefits for very little cost. These are ideal situations in which to apply the power of technical disclosures immediately.
Information that is already in the public domain (albeit in an obscure publication) is an excellent place to let technical disclosures start to work. Re-publishing existing materials with the express intent of making them more accessible to examiners can help ensure that bad patents do not issue on disclosed information. The act of publishing this information requires no strategic consideration on your part, as there is no question of the suitability of any particular innovation for public release. Typical items that should be published, or more accurately, re-published in this manner, are:
- conference proceedings
- product information
- product manuals
- marketing literature
- advertisements
- journal articles
- obscure prior art relevant to your IP domain
- rejected patent applications (with reasons for rejection)
All these should be disclosed as they become available. In addition, recent instances of these documents are likely to be easily located and published. For many companies, even older documents can be located and disclosed for the protection they afford.
In addition, those companies with active licensing programs will find benefit in early publication of a pending application. Doing so is easy and makes good sense in nearly all cases where licensing is the goal.
Look for high value
Ease, however, should not be the only consideration - certain high value tactics should also be considered when deciding where to begin, including the following:
- Protecting your patents from picket fencing by ringing your own patents with technical disclosures
- Disclosing your patent applications to overtly or covertly encourage technological dependence and therefore licensing revenue, or to prevent issuance of similar patents (by a different examiner or a different
- patenting authority) which could result in costly interference actions
- Publishing your incremental inventions and new uses of existing patents
- Retaining your freedom to practice innovation you decide not to patent, whether the innovation is rejected by the patent review committee or by the inventor him/herself
These actions provide real strategic IP value, but require that inventors and invention review committee members recognize the value of choosing technical disclosures. When used properly, technical disclosures should outnumber patent applications significantly in an enterprise. Some of the more advanced tactics may not be used daily, but they can have
enormous business impact. These include:
- Customer/supplier control
- Technology standard promotion
- Pied Piper (covert standards promotion)
Whereas these are unlikely starting points for your use of technical disclosures, you should be sure to educate researchers, product managers, business managers, innovators, and IP legal staff of the applications of technical disclosures in their workflow - and certainly everyone on intercompany collaboration teams should be aware of the inherent risks and of the opportunities available through technical disclosure.
What's the bottom line? Start today with what is at your fingertips, and then begin to look at how you can change old processes and institute new best practices that will provide you with maximal value for your IP dollar.
