The word "publish" often brings fear into the hearts of patent attorneys, and rightly so. In sectors such as the biotechnology and pharmaceutical industries, intellectual capital is king. Patents are a prerequisite to protecting some of the most valuable aspects of that intellectual capital and are thus a key to competitive survival. Ill-considered and untimely publications can be patent poison. Yet, like any poison, publication can also be used as a weapon. In attempting to avoid damaging their own patent potential through poorly timed publication, companies and academic institutions should take care not to overlook the defensive use of publications. A successfully executed defensive publication strategy can, without the need for expensive patent prosecution, help secure freedom to operate by preventing others from patenting in the technology space described in the publication.
That's the conclusion of a lengthy
article published in "bioentrepreneur" on nature.com back in 2003, and it's as true today as it was then. But there's one significant little error in that article and, since it's still accessible on the Internet, we'd like to make sure there's no misunderstanding.
The article begins with the example of
IBM's technical disclosures for patents but gets one point wrong and we think it might be helpful if we set the record straight.
A search of the US Patent database from 1996 to 2001 reveals almost 10,000 patents that cite the IBM Technical Disclosure Bulletin as prior art. The Bulletin, which is published as a component of Research Disclosure, is a mechanism for defensive publishing. Citation of a publication, such as the Bulletin, in a patent application indicates that the publication contributes to the state of the art against which the application is judged. IBM uses the Bulletin to advance the state of the art, thereby raising the bar for its competitors' patent applications. In other words, Bulletin publications force IBM's competitors to narrow their patent claims, helping IBM to reduce the possibility that its competitors' patent claims will encompass IBM inventions.
Citation of such a large number of Bulletin articles strongly suggests that IBM's defensive publication strategy is paying off. Despite its successful use by IBM and a handful of other companies, defensive publication has been slow to catch on as an intellectual property (IP) strategy in biotechnology. This article discusses the legal implications of defensive publications, analyzes strategic considerations for determining whether to publish, patent, or maintain an invention as a trade secret, discusses legal considerations for the preparation of defensive publications, and discusses forums for defensive publication.
Since 2002, IBM's Technical Disclosure Bulletin and all its technical disclosures since 1958 have been published as part of IP.com's Prior Art Database. IBM technical disclosures (from 1958 through today) are available for a fee through
IP.com. Documents can be purchased through the following:
IP.com Prior Art Database. As indicated
on the IBM website: "They are also kept on file with Patent & Trademark Offices and U.S. Government Depository Libraries. Searching/copying services are NOT provided by any PTO or Government office."
With that correction noted, the original article is still a valuable resource for anyone who wants to learn more about defensive publishing. So, just in case the editors of the nature.com website decide to correct the error by removing the article altogether, we thought it might be worthwhile to quote extensively from the
original article on this blog, for the record.
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