by John R. Sedivy, President and CEO of Analytica
Recently I had written an article about our
and how we were considering integrated various intellectual property (IP) elements to protect our first physical product and product line while bootstrapping.
After posting this particular article I had a brief dialogue with Duncan Bucknell through the article comments. Duncan is an attorney specializing in IP and is the Chief Executive Officer (CEO) of Think IP Strategy, a boutique IP law firm with a global presence. With his comments on our blog he asked us to consider defensive publication, a subject which I had not encountered prior to.
If you haven’t read that particular article or the useful advice Duncan had provided you should do so, by visiting our article Intellectual Property Strategy.
This led me to conduct some research into a really fascinating area of IP law, the beginnings of which I will share here.
What Is Defensive Publication?
Defensive publication, otherwise referred to as technical disclosure is a strategy employed by firms with IP to protect their right to use said IP. In essence the inventor or business publishes the information which otherwise would be patentable, to the public domain limiting their own ability to patent the disclosed information but also limiting others, such as competitors to do so.
For a detailed account refer to the Defensive Publication Wikipedia definition.
Why You Should Consider Defensive Publication
Placing all your hard earned information and innovation in the public domain may seem counterintuitive and foolish at first glance but there are some very good reasons for doing this. Historically larger firms such as IBM and Xerox have gone to great lengths to employ the strategy of defensive publication, initially bewildering researchers and competitors. In recent years many small businesses are increasingly embracing this strategy.
Although there are a number of reasons why firms both big and small choose defensive publishing, there are three primary advantages when considering defensive publication:
1. Cost: A primary advantage is cost, which potentially can be zero. It appears that one need only release the information to the public domain such as releasing the information in a conference paper. I imagine that documenting your idea in a blog may be an option, but I’m not positive on this and need to do further research. With defensive publishing the innovator would not be subject to patent or enforcement costs associated with patent filing and potential litigation.
2. Guaranteed Use: By disclosing the information to the public you are guaranteeing your firm the right to use the information. When considering the option of a trade secret, a competitor could obtain your secret sauce through competitive intelligence and patent your idea and therefore prevent you from using it!
3. Strategy: Defensive publication appears to be an excellent strategic tool when it comes to your overall IP strategy. For example, large firms have used defensive publication as a means to derail competitor efforts by prematurely releasing information in the hopes of discouraging competition. There are other tactics employed by firms who pursue defensive publication, which are outside the scope of this article.
Now that we know the advantages of this option, let’s look at when it makes sense to do it.
When You Should Consider Defensive Publication
Defensive publication seems to be of optimal use when compared to patents and trade secrets in the following circumstances:
1. An innovation is easily reverse engineered
2. There is a high probability of being pursued by “patent pirates”
3. Industries where bad patents have a higher probability of being issued
Innovations that are easily reversed engineered are easily patented around. For example, if your product is in the retail space a competitor could purchase the product, make some modifications and possibly be granted a patent for a similar innovation. This is more difficult to accomplish with business-to-business (B2B) or highly complex solutions. The risk of this scenario increases with the corresponding increase in the issuance of bad patents by the patent office which I will discuss shortly.
Next, patent pirates are individuals who seek to profit through bogging firms down in patent litigation but do not intend on actually competing. Patent pirates achieve profit not through innovation but through litigation; this is a risk for primarily larger firms.
Increasingly research has shown that there are an increasing number of bad patents being issued by patent offices. As the state of the art of various technologies increases, the patent office becomes less skilled in assessing the true novelty of an invention due to lack of specialized expertise in the area in question. This is especially true with software and business process innovations. Another reason for the increased issuance of bad patents – the increase in the number of patent filings. The increasing number of bad patents being issued encourages more patent filings in the hopes that the patent will be issued regardless of merit. The cycle appears to perpetually feed upon itself with the risk growing over time to the legitimate innovator.
Defensive Publication Considerations
Despite it’s advantages there are some items worth considering before taking the path of defensive publishing as it is not ideal for all situations.
First, once you defensive publish your innovation, for better or worse the information is out there. That means beyond the one year time frame upon disclosure to the public you cannot patent the idea should you wish to do so at a later date.
Second, if your competitors do not have access to your innovation and you do not anticipate that they will, you may wish to go the route of protecting your idea as a trade secret rather than disclosing through defensive publication.
Third, if your idea is technically complex and not easily reverse engineered you may wish to pursue patenting or trade secrets as you may not receive benefit from defensive publication.
Fourth, if your business is a start-up with a very narrow niche defensive publication may not be the right choice. This explains why very high-tech startups as well as pharmaceuticals generally do not pursue defensive publishing as they would open themselves up to more competition as competitors have a potential advantage of accessing the information without having to incur the costs (both time and money) of developing the innovation.
Finally, it appears that the success of defensive publication hinges on the patent office finding the area where your innovation was published. If you defensive publish and a competitor applies for a patent, but the patent office fails to discover your defensive publication, then your competitor could defend their rights under the filed patent. For this reason at least a couple of firms, IP.com and Research Disclosure, have arisen to address this need. Based on my research it appears that these firms charge by the page for creating prior art from your submitted information and costs could range from $40 – $110. This is obviously more costly than submitting via a conference paper, however it increases the probability that the patent office will find your defensive publication and in turn reduce the associated risk of a competitor being granted a patent on said innovation.
Defensive Publication Resources
Like other IP related topics, defensive publication is a highly complex topic which I am just scratching the surface of here. Based on our situation at Analytica this seems like a very viable option for the following reason:
1. Our product is not technically complex and could be easily reverse engineered by someone with the requisite knowledge
2. Our idea could be designed around and an alternate patent filed once reverse engineered
3. The potential of zero to low cost is appealing for a bootstrapping startup
4. Even if we only achieved a small market share due to a competitor copying the idea it would make a large impact on our business, it appears to be much less expensive to guarantee our right to sell the product when compared to patent and enforcement costs
That being said I am going to do a little more research on this subject and update this blog with my findings. In addition, I plan on updated my original diagram to include defensive publication as an option for Level 1 strategy as outlined in my Intellectual Property Strategy article.
In the meantime here are some resources that I used for this article and that you may find of interest should you wish to delve deeper into the subject of defensive publication:
1. Wikipedia – Defensive Publication: Formal definition of defensive publication. Referred by Duncan Bucknell of IP Think Strategy.
2. Social Science Research Network – Defensive Publishing By A Leading Firm: Amazing paper on defensive publication. It may take you a couple of hours to get through, but it’s definitely worth a read for those interested in the subject. The authors go so far as to model their assumptions to move beyond basic heuristics, good stuff. Also, this article you are reading is based heavily on this work.
3. University Of North Carolina School Of Law, Scott Baker – Disclosure And Investment As Strategies In The Patent Race: Academic paper on how firms use defensive publication as a strategy to include targeted innovation. I plan on studying this paper more in-depth and writing a follow-up article in the near future.
4. United States Patent And Trademark Office (USPTO) – Abstracts, Abbreviatures, and Defensive Publications: USPTO resource on defensive publication. Referred by Duncan Bucknell of Think IP Strategy.
5. United States Patent And Trademark Office (USPTO) – US Patent Full-Text Database Manual Search: Searchable patent database; referred by Duncan Bucknell of Think IP Strategy.
6. IP.com: Searchable patent, application, and prior art database which for a fee allows for submission for defensive publication (or technical disclosures) of your ideas.
7. Research Disclosure: Journal which serves as a vehicle for defensive publication and technical disclosures.
Thanks again to Duncan Bucknell of Think IP Strategy for suggesting this consideration and stay tuned for follow-up articles on defensive publication and an updated Intellectual Property Strategy article.
Check out these blog posts by John R. Sedivy
- Defensive Publication – How Much Is Enough?
- Intellectual Property Strategy
- Is A Patent Really Necessary?