On the Green Patent Blog, covering intellectual property issues in clean technology, patent attorney Eric Lane follows up that article with a post headlined "More on Gratis Greentech: A Proposal for Expanding the Eco-Patent Commons" where he writes:

Whether or not you agree with her argument about issued patents, her idea of adding invention disclosures to the Commons would almost certainly benefit the initiative and its participants by increasing the value and utility of the available green technology. Of course, no independent or targeted donations to the Commons would be necessary because enabled invention disclosures are by definition in the public domain and available to everyone. Instead, to make the technology available to greentech firms, it would just need to be made accessible via the Commons. Broadly, Cronin’s idea could be implemented in one of three ways. Either companies who publish environmentally-beneficial technology in these disclosures could provide the publication information or citations to the Commons, the Commons itself could monitor the disclosure publications, or the publications could alert the Commons of relevant published disclosures. However it’s done, I can’t argue with increasing green idea and technology sharing.

Defensive Publishing denotes the disclosure of an invention with the purpose of creating prior art, and thus to prevent the granting of a patent. Regarding a worldwide initiative to "promote the progress" in the interests of the global environment, as envisioned by the the Eco-Patent Commons--beyond patents--including innovation and inventions not before patented, one must consider the different effects of "prior art" in various patent jurisdictions around the world.

In a  recently published Working Paper titled "Alternatives to the Patent Arms Race: An Empirical Study of Defensive Publishing", Joachim Henkel and Stephanie Pangerl note the differences between the European Patent Convention and US patent law.

US patent law is somewhat more restrictive in its definition of state of the art by excluding from patentability only those inventions that were “known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent” (US Patent Act, Section 102a). Public use in Europe would thus not be sufficient to establish prior art in the US. In addition, use or description of the invention must have taken place before the invention by the applicant or, as Section 102.b specifies, one year or more before filing of the application. This “first-to-invent” rule has an ambiguous effect on the attractiveness of defensive publishing. On the one hand, a DP may not pre-empt a patent application if the latter is filed less than 12 months after the DP and if it claims an earlier date of invention. In such a case, a DP might even trigger a competitor’s patent application. On the other hand, a DP can help to establish priority for an inventor, who maintains the option to file for a patent within the following year.

Consistent with the objectives of the Eco-Patent Commons, any similar system of technical disclosure publication should go beyond existing defensive publishing strategies to include a legally binding waiver of any option to file for a patent within the year following such publication.

We'd propose a definitive publication system for technical disclosures of eco-friendly innovations that would effectively relinquish all rights of the publisher to apply for a patent of the invention disclosed, anywhere in the world, anytime in the future.

The Peer-to-Patent project is an initiative of New York Law School in cooperation with the USPTO aimed at opening the patent examination process to public participation, and improving the quality of patents. Under the Peer-to-Patent pilot program, inventors agree to have their patent applications posted for up to four months on the www.peertopatent.org Web site. Expert volunteers from the public then discuss the applications and submit prior art they think might be relevant to determining if an invention is new and non-obvious, as the law requires.

The program’s first 19 patent applications—including applications from GE, Hewlett-Packard, IBM, Intel, Microsoft, Red Hat, and Sun Microsystems Inc., all companies that volunteered to be part of this pilot—have been examined. For every 500 patent applications published in 2007, the USPTO received only one third-party prior art submission. In the Peer-to-Patent pilot, volunteer reviewers supplied nearly four prior art references for each pilot application - a trend which could significantly help the USPTO if Peer-to-Patent expands beyond a pilot phase.

So far, of the first 19 first office actions sent by the USPTO, five patent applications received non-final rejections that relied specifically upon prior art submitted through Peer-to-Patent. In these instances, submissions of prior art from the public enabled the USPTO to reject claims the examiners believe fail the novelty and non-obvious requirements that prohibit patents on inventions that have already been invented or would have been obvious. The USPTO response time on these office actions is notable. Because the USPTO agreed to examine patent applications in the pilot ahead of other applications, the time between application filing and the onset of examination shrank from four to two years.

USPTO’s Commissioner for Patents John Doll noted, “I hope other patent applicants look at the processing statistics from this pilot program and realize that Peer-to-Patent review might be a win-win situation for them. We are encouraged by the initial success of the pilot, and we believe it holds potential as a source of relevant prior art.”

In sending the program’s first non-final rejection, the USPTO examiner used prior art and commentary submitted by Steven Pearson, a senior software engineer at IBM, to reject claims of an HP application. The second non-final rejection relied upon prior art and commentary submitted by Rob Cameron, a Professor of Computer Science at Simon Fraser University, to reject claims of an IBM application. As a result, Pearson and Cameron have been awarded the title “prior artist” on the pilot Web site.

“It is a privilege to participate in this important project,” Steve Pearson, IBM software engineer, said. “I’m confident these early results will help validate that this community approach can have a meaningful impact on the examination process and the quality of patents. Hopefully this will encourage the participation of more domain experts in this pilot program.”

Professor Cameron believes “it is to everyone’s benefit—inventor, investor and the public at large—to make the best possible effort to ensure that issued patents are properly placed in the context of related prior art. In the future, I think that an open, mediated review process following the trail blazed by Peer-to-Patent should become an integral part of best practice patent examination.”

HP and IBM will now have the opportunity to respond to these first office actions and persuade the examiners their claims are new and non-obvious.

“We’re very pleased with this initial outcome,” Manny Schecter, Associate General Counsel for Intellectual Property at IBM said. “Patents of questionable merit are of little value to anyone. We much prefer that the best prior art be identified so that the resulting patent is truly bulletproof. This is precisely why we eagerly agreed to sponsor this project and other patent quality initiatives. We are proud of this result, which validates the concept of Peer-to-Patent, and can only improve the quality of patents produced by the patent system.”

Launched in June of last year, Peer-to-Patent opens the patent examination process for the first time, enabling the public to contribute prior art and commentary relevant to the examination of pending patent applications assigned in TC 2100 technologies with the goal of improving patent quality. On average, each posted application has garnered a community of 14 reviewers who have submitted five instances of prior art per application.

See also: www.peertopatent.org

The problem is that the project includes only "patents" and not the undisclosed innovations and trade secrets within the intellectual property of companies and independent inventors that have not yet been patented. Many of those inventions might better be published now to promote the progress of science and the useful arts for a sustainable environment and ecology for the future.

To compensate for these drawbacks and make the Eco-Patent Commons as useful and powerful as it can be, the initiative requires expansion to offer truly recent inventions that have not spent years in the patent application process. This involves widening the scope of the initiative to include non-patented inventions that have yet to be marketed and made public.

One way to make these inventions available is through enabled invention disclosures. An enabled invention disclosure (also called “defensive publication” or “technical bulletin”) is a written description of an invention that ideally has the same degree of detail as an issued patent. Therefore a well-written invention disclosure provides sufficient information to the reader to understand and use the invention.

Many companies successfully use enabled invention disclosures as part of their intellectual property (IP) strategies. Companies frequently have inventions that they do not wish to patent because the patent process is so expensive, including invention development costs, legal preparation and patent prosecution fees. However, companies also wish to prevent competitors from patenting those same inventions.

By using enabled invention disclosures to publish the invention, companies accomplish both goals: they save the cost of patenting but they also establish a “prior art bar” to obtaining the patent and make it impossible for competitors to claim it the invention as their own. Several Web site forums exist for publishing inventions, including www.ip.com and www.researchdisclosure.com.

The Eco-Patent Commons should be expanded to include these enabled invention disclosures. Many inventions that companies deem non-strategic for patent application and instead decide to publish may be excellent candidates to be donated to the Eco-Patent Commons. These published inventions would be truly new, fresh and useful -- a good first step to creating the true springboard for green innovation that the Eco-Patent Commons was meant to be.

We couldn't agree more.

As indicated in our original post about the Eco-Patent Commons, IP.com would really like to contribute to this very worthwhile initiative by providing the publishing platform to broaden the scope of the project to include innovations and inventions useful to the environmental movement well beyond those patents that have been contributed by the project's founding companies, some of which are already using the IP.com Prior Art Database. We've got technologies available that could very quickly take this green initiative to a whole new level of global participation.

Let's discuss.

If we have learned one thing from the history of invention and discovery, it is that, in the long run - and often in the short one - the most daring prophecies seem laughably conservative. -- Arthur C. Clarke, The Exploration of Space, 1951

Sir Arthur Clarke is credited with being the "godfather of the communications satellite" by many, including himself. "Although he was not the originator of the concept of geostationary satellites, one of his most important contributions may be his idea that they would be ideal telecommunications relays. He advanced this idea in a paper privately circulated among the core technical members of the BIS in 1945. The concept was published in Wireless World in October of that year." The Wireless World paper was written in late June and submitted to the RAF censor on July 7 and its title was changed from “The Future of World Communications” to “Extra-Terrestial Relays,” as noted in this powerpoint presentation. One slide in the presentation discloses this nugget of information that we found apropos our own blog about securing innovation.

Q: Why did Mr. Clarke not patent the communication satellite?

A: I have often been asked—usually pityingly--why I made no attempt to patent the communications satellite. Perhaps the most truthful answer is that I never really expected to see it in my lifetime; I also (though in more cynical moments I am skeptical about this) seem to recall thinking that it was an idea for all humanity, so I should publish to prevent anyone else from taking out a patent. As indeed I did...I learned from my patent attorney that even if I had tried to patent communications satellites in 1945, the patent would have been rejected because the required technology did not yet exist, and the patent wouldn’t have been worth getting because its life would only have been 17 years. The patent would have expired the year before Early Bird was launched.

A hundred years ago, the electric telegraph made possible - indeed, inevitable - the United States of America. The communications satellite will make equally inevitable a United Nations of Earth; let us hope that the transition period will not be equally bloody. -- Arthur C. Clarke, First on the Moon, 1970

Arthur C. Clarke: An Appreciation of a Life Well-Lived is an appropriate obituary for the man who, when asked how he'd like to be remembered, is reported to have said, "I have had a diverse career as a writer, underwater explorer and space promoter. Of all these, I would like to be remembered as a writer."

In the business of intellectual property (IP) protection, the first rule is to establish the date on which a new idea was conceived. Conventional wisdom for establishing this date is to write up a short IP disclosure, seal it in an envelope, and mail it to yourself. The US Postal Service postmark legally establishes the date on which the IP within the envelope was created.

Conventional wisdom, or urban myth?

In an article headlined "Who's Idea Is This Anyway?" published several years ago, BusinessWeek discussed with intellectual property attorneys Nadine Jacobson and Allison Strickland the pitfalls of protecting ideas:

Q: How do entrepreneurs get into trouble with copyright, patent, or trademark issues?

Strickland: I think for one thing, they listen to the urban myths that circulate. There's one that says if you write out an idea and put it in an envelope and mail it to yourself, it's copyrighted, and anyone else who uses it is infringing. That's widely believed.

Another one says that as long as you don't take more than 25% or 30% of someone else's work, you're not infringing. But neither of those things is necessarily true.

The problem is that IP concepts are confusing and somewhat sophisticated. It's a very confusing part of the law and easy to misunderstand. The safest thing for entrepreneurs to do is to step back from what they think they know and consult reliable sources to get a reality check.

Jacobson: A lot of times, people who are starting up new businesses are concerned about keeping costs down, and they don't want to hire lawyers. So they go to a family friend or a corporate lawyer who dabbles in IP and get free advice, but it's not exactly accurate.

The blogging engineer is confused now, apparently applying an urban myth about establishing the earliest date of composition of song lyrics in which an aspiring songwriter claims copyright, and confusing that with defensive publication of a technical disclosure of a potentially patentable invention.

Patents are incredibly useful tools in that they give the inventor the right to exclude others from making, using or selling the patented invention. However, this exclusive right must be enforced. If someone is using an invention for which you have a patent, you can sue for infringement to reclaim damages, as well as force the offending party to stop. Unless you initiate the infringement proceedings (or the threat of infringement proceedings), there is nothing to make the offending party stop using your innovation. In essence, patents only have power if you are willing to stand up in court to defend them.

The problem is that obtaining patents is not a trivial process. Legal fees, filing fees, maintenance fees, and lost time by your R&D staff can be quite costly. Spending this kind of money on a powerful innovation that can return hundreds or thousands of times the investment is clearly worth it. Yet, only a small portion of the items from a typical invention review qualify as such. More often, the majority of ideas that result from an invention review are good ideas that, for one reason or another, do not end up patented.

Why?

Typically, there are a number of inventions on which you may already have partial patent protection. Inventions that improve upon an existing patented invention are good examples. Another reason you may not wish to obtain patent protection on a good idea is that you don't expect to ever gain back the money that would be spent pursuing the patent. This is highly typical for inventions that improve the operation of some aspect of your business, but are not part of your general business strategy. (A computer chip manufacturer that finds a better way of packaging would be a good example. Packaging sales are not part of the core business, and most likely patents in this area would never be pursued.)

So what happens to the innovation I don't patent?

Typically, nothing. You are free to use your invention without a patent ... until someone else patents the idea. That's when the problem occurs. At this point, they could force you into paying licensing fees, or to stop using the innovation altogether. In essence, forcing you to stop using an idea you had first, but never patented.

If I had the idea first, doesn't that give me the right to use it?

Unfortunately, having the idea first doesn't do anything for you. The only way to prevent another patent from issuing, or defeating one that has already issued, is by being able to prove not only that the idea already existed, but that it was available to the public as well. This is where technical disclosure comes in. Innovation you do not patent is at risk of being patented by others. Publishing that innovation establishes a clear trail of evidence that you had this idea, and made it available to the public. Therefore, it should be considered "general knowledge" by the patent examiners, and not be allowed to be patented. In effect, allowing you to retain your right to use your own innovation, without the hassle and expense of obtaining patent protection.

Mailing yourself a written record of an idea does not prove that the idea was available to the public. To establish that an idea was available to the public as of a date certain that can be accepted as evidence by a court of competent jurisdiction, an inventor can defensively publish a technical disclosure of the invention in the Prior Art Database, which is accessible by patent examiners at the USPTO and other patent jurisdictions.

Given the compelling reasons for publishing your technical disclosures, it's not a question of whether to publish, but rather a question of where to publish. IP.com's online publishing services are the fastest, easiest, and most cost-effective way to release your innovation to the public. However, many people are skeptical of the validity of electronic publications and their status in the courts.

What is the opinion of the USPTO regarding electronic documents?

A white paper by the United States Patent and Trademark Office states that "An electronic publication, including an on-line database or Internet publication, is considered to be a "printed publication" within the meaning of 35 U.S.C. 102(a) and (b), provided the publication was accessible to persons concerned with the art to which the document relates."

Does IP.com have an independent legal opinion of the service?

The legal opinion on IP.com's publication process by McDermott, Will & Emery states that "Based on the above analysis, it is our opinion that invention disclosures made available on IP.com's website can be authenticated, satisfy the hearsay rule or the business records exception, and satisfy the requirement of an original in a patent infringement action in federal district court in connection with an assertion of invalidity under 35 U.S.C. §§ 102 and/or 103." (read the entire document - 70Kb PDF)

What steps does IP.com take to ensure document longevity?

In addition to the online maintenance of disclosures, IP.com publishes a monthly printed (i.e. paper-based ' non-electronic) publication, The IP.com Journal, which is available to libraries worldwide. The presence of The IP.com Journal in libraries means that not only do you not need to fear the "electronic-only" publication, but it provides publicly accessible archive copies in the instance the IP.com database becomes unavailable online.

Recently, on the Patent Information Users Group discussion list, we picked up an email conversation among registered users of the PIUG that raised questions and concerns that re-publication on PubMed Central, while a valuable additional source for online access to information that might be evidence of prior art, does not help establish with any authority the "publication date" or the "public availability date" of the information published in participating journals. As one industry specialist observed:

Websites are notorious for not posting availability dates or publication dates, or for posting dates that later get revised with reloads. Just as masters theses are often problematic prior art documents, not just from a retrieval perspective, but from proof of publication or public availability dates. Universities vary widely in their treatment of their own Masters theses. Some are accessioned like standard publications, get date stamped, cataloged normally,etc., but others merely sit on special collection shelves with no way to prove public availability until someone checks them out!

It is certainly difficult, if not impossible, to verify publication dates of online content. That is why many companies and individuals publish their documents not only in a specific trade journal, but also in secure online environments such as the IP.com Prior Art Database to provide a non-refereed destination for technical disclosures and other documents which need verifiable dates of publication.

If participants in this discussion on the PIUG discussion list and other readers here would like to share thoughts and experiences verifying dates of publication of online documents, we'd be very interested in your comments.

The antidote to software patents involves creating their exact opposite — a formal process of contributing software innovations to the public domain. Vonage’s experience, however, illustrates that the various standards-creating processes represent only a first step. A successful open-source model for patents requires creating a searchable archive of prior art in which inventors contribute their innovations in order to get protection from subsequent litigation.

This would replace the patent office’s dependence on the oath signed by patent applicants “acknowledging the duty to disclose all information known to be material to patentability.” Vonage’s decision to base its technical implementations on the work of the VoIP Forum and IETF seems reasonable. Who would have guessed the patent office granted Verizon a patent on the same subject matter?

...

A formal process of filing prior art to the public domain will protect an emerging infocom industry better than just depending on overworked patent examiners and applicants for prior art searches.

Such a system exists, already. The Software Patent Institute (SPI) is a nonprofit corporation formed to provide prior art related to software technology with the intention of improving the patent process.

Founded in 1991, the Software Patent Institute (SPI) is a nonprofit corporation formed to provide prior art related to software technology with the intention of improving the patent process. We strive to aggregate hard-to-access software data which is not readily available online or in electronic form elsewhere. Our source documents include computer manuals, older textbooks, journal articles, conference proceedings, computer science theses, and other such materials which may contain valuable prior art.

The Software Patent Institute is dedicated to providing information to the public and assisting the United States Patent and Trademark Office and others by providing technical support in the form of educational and training programs and providing access to information and retrieval resources concerning software prior art.

The SPI has received strong encouragement from the USPTO, and its mission has been endorsed in reports or resolutions from the Office of Technology Assessment (OTA), the Advisory Commission on Patent Law Reform, the Computer Business Equipment Manufacturers Association (CBEMA), the Software Publishers Association (SPA) and the American Intellectual Property Law Association (AIPLA).

The Software Patent Institute has among its members some who believe strongly in the desirability of patents for software-related inventions and some who are strongly opposed to patents for software-related inventions. SPI deliberately takes no position on this issue, or on any particular patent or litigation. We believe that there is a current lack of readily-available information concerning software technology, and we are attempting to help solve that problem.

The Software Patent Institute Database of Software Technologies consists of descriptions of software technologies. Each record in the database is all or a portion of a source document that is generally not readily available on-line or in electronic form elsewhere; source documents include computer manuals, older textbooks and older journal articles, conference proceedings, computer science theses, and other such materials, since these are where pointers may be found to prior art.

The Software Patent Institute Database of Software Technologies is contained exclusively in the IP.com Prior Art Database. While limited searching can be performed for free as a "guest", robust and unrestricted searching along with all-inclusive document downloads is available in weekly, monthly, and yearly intervals. Get started searching SPI data today - click here for more information.

But the number of patents granted to IBM represents just a fraction of the many thousands of innovations documented each year by the company. How then, if not by patent application, does IBM secure its innovations for potential future patents or implementation?

Defensive publishing. Here are a few examples of interesting innovations recently published by IBM in the IP.com Prior Art Database:

• A device to warn inattentive drivers they are approaching a red traffic light
• A Methodology for Providing Spa Services in a Virtual World
• Method to ensure timely response to email messages by using probability derived from past interactions

Browse the Prior Art Database or search prior art for free, as our guest.

Issued patents can be deadly. Enterprises of all stripes face burgeoning risks that competitors will obtain blocking patents. Even strong manufacturers with worldwide distribution, well-branded products and adoring customers can be stopped dead in their tracks by broad competitive patents.

Just how deadly are competitive patents? Consider this, if your competitor is granted a patent broad enough to prevent you from making or selling products and services, you may be forced to litigate. Average legal fees to defend a patent case are over $1.5 million regardless of the outcome. Verdicts and judgments in patent cases can easily exceed eight figures. Even greater costs can be incurred in attempting to design around competitive patents after product launch, or being shut down by a preliminary or permanent injunction.

There are myriad methods for protecting innovation and intellectual property. One answer is to join the patent race. But be prepared to spend. Average legal fees to file one patent application in the U.S. are in the range of $12,000-$15,000. Multiply that by three or four to file applications in key locations throughout the world. Then add over $100,000 to maintain each patent in those locations throughout its life. All that cost for one invention. The problem grows when you consider that for most companies, the number of inventive ideas exceeds the number of budgeted patent applications by at least ten times.

To compound the "cost of getting a patent" problem, consider the recent Supreme Court ruling (KSR Int. v. Teleflex, Inc.) relating to an overwhelmingly important concept called "obviousness." This verdict has essentially made it harder to get patents and harder to enforce already issued patents. This means patent acquisition cost has gone up and patent value has gone down. In most cases, it is simply not cost effective to go through the patent process.

What are the alternatives to patenting?

If created and protected correctly, trade secrets can have real value. But, beware. In today's environment, protecting trade secrets is often unrealistic. Increased competition has driven more aggressive pursuit of information by competitors with access to previously inaccessible data sources and previously unheard of data mining tools. That, coupled with increased employee mobility and ease of communication has made it virtually impossible to keep secrets. Companies may not appreciate the risks associated with the use of trade secrets until after they see their ideas claimed in competitive patents.

How can defensive publishing be incorporated into an IP strategy?

With patenting on the rise, patent offices have become overburdened. This has resulted in patents for technology that has already been in the public domain, sometimes for years. Why? Because patent examiners have very limited time and resources to search prior art. As a result, many references that examiners could use to reject patent applications are never found.

The first reaction some have when considering these issues is to defensively publish everything. However, defensive publications can be a double-edged sword. If placed in the right prior art database, they can be powerful weapons for destroying competitive patents. But, they can also be powerful weapons for destroying your own patents. So, to get started it's a good idea to properly disclose innovation that has already been placed in the public domain, but isn't in a location readily or easily utilized by patent examiners.

Product descriptions could be a great source for prior art to support final rejections of overly broad competitive patent applications. Again, the problem for examiners is finding them. Examiners only have a few hours to do a full prior art search for each patent application. When considering the enormity of prior art sources, a few hours is nothing.

To make an effective public disclosure of technology, it comes down to a question of reasonable access. Ideally, all product descriptions should be placed in a location searched by worldwide patent examiners. Since these are in the public domain anyway, publication of product descriptions does not need to be delayed by an IP review process.

Conference Publications and Journal Articles

All papers submitted at conferences and journal articles place information -- often innovative information -- into the public domain. The questions become, "What's the likelihood that a conference is attended by patent examiners? Will the journal articles be placed in a location easily searched by patent examiners?" The answer is "No" to both.

Patent examiners are simply not able to keep pace with the patent race. They cannot be everywhere or even search everywhere. Many IP savvy companies make it a practice to concurrently publish all conference proceedings in a location searched by patent examiners.

What about disclosures that are not already in the public domain?

In cases, like those mentioned above, where the public disclosure has already been made, for better or worse, no further decision is necessary. You can simply publish without fear of burning your patent rights, because either (a) you have already filed, or (b) your rights are already burned. But what about cases where there has been no previous public disclosure of the invention? This is where a process comes in -- a publication clearance process.

Publication Clearance System: Publication Clearance is becoming more and more popular as more and more brilliant inventions are forever lost to the public domain. There has always been a conflict between IP groups and their need for secrecy to protect patent rights, the innovators of a company or university and their desire for public recognition, and marketing communications groups, charged with generating public exposure. This conflict can be overcome by a simple publication clearance system (typically implemented through workflow) that touches the key decision makers for their input before a disclosure is published.

Invention Review Committee (IRC): IRCs have been around either formally or informally for years and years. But typically the decisions at these committees are limited to whether or not to file a patent application. Since most invention disclosures do not end up as patents (often for budget reasons), most inventions live lives of quiet desperation; they never become anything to anyone. These inventions often consist of incremental improvements of core inventions, or new uses. They are not worthy of patenting, and since patenting is the only question before the committee, these rejected disclosures can never be put to work.

IRCs also need to ask this critical question: "Should we publish?" A defensive publication can be used as a weapon. No longer will those castaway disclosures live out eternity in the dark confines of a desk drawer or as anonymous bytes in a hard drive. With the right questions being asked during an IRC meeting, they can be used to prevent or defeat competitive patents throughout the world.

This article was previously published in IndustryWeek magazine.

The Roundtable is an informal, practically-oriented event.  It responds to the strong level of interest expressed by many national authorities and community representatives in sharing experience and developing dialogue and cooperation on practical initiatives to build capacity for the appropriate protection of intellectual property and traditional cultural expressions (TCEs), traditional knowledge (TK) and genetic resources (GR).

The Roundtable follows in the tradition of community consultation that has been part of WIPO’s program in this domain since its inception with the first fact-finding consultations dating back to 1998 and 1999.

One of the first such projects, the Traditional Knowledge Digital Library, is being compiled by hundreds of doctors in India with the help of software engineers and patent examiners, an encyclopedia of the country's traditional medicine in five languages - English, French, German, Japanese and Spanish - in an effort to stop people from claiming them as their own novel inventions and patenting them.

The BBC reported on this a couple of years ago.

Indian scientists say the country has been a victim of what they describe as "bio-piracy" for a long time.

"When we put out this encyclopaedia in the public domain, no one will be able to claim that these medicines or therapies are their inventions. Till now, we have not done the needful to protect our traditional wealth," says Ajay Dua, a senior bureaucrat in the federal commerce ministry.

Putting together the encyclopaedia is a daunting task.

For one, ayurvedic texts are in Sanskrit and Hindi, unani texts are in Arabic and Persian and siddha material is in Tamil language. Material from these texts is being translated into five international languages, using sophisticated software coding.

The sheer wealth of material that has to be read through for information is enormous - there are some 54 authoritative 'text books' on ayurveda alone, some thousands of years old.
   
People outside India are not aware of our immense traditional knowledge wealth

Then there are nearly 150,000 recorded ayurvedic, unani and siddha medicines; and some 1,500 asanas (physical exercises and postures) in yoga, which originated in India more than 5,000 years ago.

Under normal circumstances, a patent application should always be rejected if there is prior existing knowledge about the product.

But in most of the developed nations like United States, "prior existing knowledge" is only recognised if it is published in a journal or is available on a database - not if it has been passed down through generations of oral and folk traditions.

The irony here is that India has suffered even though its traditional knowledge, as in China, has been documented extensively.

But information about traditional medicine has never been culled from their texts, translated and put out in the public domain.

PBS Online NewsHour reported on the story again this year, interviewing V.K. Gupta Director, Traditional Knowledge Digital Library, and posted  the audio with a transcript of the program here.

If readers have more information about this ambitious defensive publication, or any like it being undertaken in  China or other countries with indigenous medicinal knowledge, we'd be interested if you might  take a few minutes and leave comments about this at the link below.

A briefing paper, Defensive Publishing: A Strategy for Maintaining Intellectual Property as Public Goods, presented  to the International Service for Agricultural Research several years ago, first introduces the practice of defensive publication then reviews the concept of novelty, which is at the center of its use. It then describes the various options available for defensive publishing and discusses the strengths and weaknesses of each. The conclusion presents a table that research managers can use to aid decisions on defensive publishing both forms and methods.

The authors of this article, Stephen Adams and Victoria Henson-Apollonio, argue that defensive publishing is just one of a range of tools that enable scientists and research enterprises to exploit their intellectual property effectively. Indeed, they say, it should not be used alone, but rather as part of an institutional strategy for management of intellectual property assets. They call on public research organizations to put such strategies into place.

The introduction to this paper provides a short guide to defensive publication.

Scientific research generates “intellectual property” (IP), that is, new knowledge and ideas belonging to the individual creators who did the research or the enterprises that funded the work. A range of strategies are available to enable scientists and research enterprises to exploit their IP effectively. One such strategy in use by national and international research institutes and private entities is “defensive publication.” While not suitable in all circumstances or for all types of research outcomes, defensive publication can be an effective way to disseminate scientific results in order to preserve the results as a public good.

In addition, some forms of defensive publication enable the scientist/innovator to maintain some control over the use of their results or invention. In a defensive publication, the scientists disclose details about their innovation to the public, thereby preserving their freedom to use the invention by preventing others from patenting it. The link between defensive publication and patenting is the requirement for novelty in a patent application. Since a published description of the research product is available, it can no longer be called new and thus patent-worthy. This is how defensive publishing effectively prevents competitors (and possibly even the originating scientist) from patenting an identical or similar innovation.

The defensive publication route is especially useful for innovations that do not warrant the high costs incurred in patent applications but to which scientists do want to retain access. It is especially useful for agricultural researchers in the public sector, since it is not only a means by which they can communicate results to others. But, when done properly, it serves the additional purpose of forestalling eventual patent awards on the research product described, hence preserving the innovation as a public good.

Commercial companies too are fast adopting defensive publishing as a key element of their IP management strategy. According to Richard Poynder’s analysis in the Financial Times,1 as the costs of patent applications and litigation continue to rise defensive publishing is offering scientists another option: by making published descriptions of their innovative research products available to the public, they prevent others from patenting them, thus they ensure the results’ continued availability without incurring the significant legal and filing fees involved in patenting.

Literature searches are typically a main element of patent grant procedures. Lack of published documentation on an innovation—or lack of such documentation in the literature traditionally reviewed by patent examiners— may indicate to a patent examiner that the innovation is indeed new and worthy of patent protection. Even older innovations might be judged patent-worthy if a search reveals no published record of the invention. In one case, Indian activists challenged the 1995 award of patent rights over products traditionally derived by local communities from the spice turmeric, persuading the US Patent and Trademark Office to revoke the patent by pointing out literature referring to the “invention” published previous to the patent application date. Effective defensive publication thus can keep innovations out of the private domain and open for use by scientists both in the developing and the developed world, without fear of patent infringement on their part or on the part of the end-users of their products.

In conclusion, the authors write:

This Briefing Paper has provided an overview of defensive publishing for institutions weighing the options available for publishing research results and disclosing innovations...In short, if the main concern is to reach a specific audience but there is little interest in using the publication as prior art to trigger the rejection of a patent claim, then self-publication is likely the most cost-effective means of disclosure. But other options should be considered if an organization’s main goal in publishing is to defeat a potential patent application. In this case, using a commercial company that specializes in publications that reach the attention of most patent examiners is the recommended course.

This Briefing Paper looks at defensive publishing as an IP management strategy that is particularly relevant for agricultural researchers working in the public sector, but it's worth considering for its implications for innovative organizations in the private sector, as well, and across a wide range of industries including technology, pharmacology, and agronomy.

Abstract republished with permission of and credit to Eldis.

Companies which prefer to set up corporate accounts that share a pool of vouchers can contact an IP.com representative at 1-585-427-8180. Limited free searching of the Prior Art Database is available. Full access and robust searching such as patent examiners enjoy, including unlimited downloading of documents, is available for an annual fee. Our search facility allows for full text, concept or fielded Boolean searches.

Content of a technical disclosure

Submission of your technical disclosure for publication via the IP.com website is accomplished by a simple series of steps, each of which has instructions and links to get further information if necessary. The most significant element that is required by the disclosure submission process is the primary document - the document containing the technical disclosure itself. Your primary document should contain the full text and, optionally, any graphics associated with your disclosure. Many standard formats are accepted, including Microsoft Word® (DOC), Microsoft PowerPoint® (PPT), PDF, HTML, Rich Text Format (RTF), and clear text (ASCII) files.

If you so choose, you can put supporting materials into the attachment - a secondary file that may be uploaded during the submission process. Files of arbitrary format are accepted as the attachment, allowing you to publish output from CAD programs, graphics programs, or virtually any other program that you use. It is possible to publish a disclosure with multiple attachments by bundling the attachments using various technologies. If you use a ZIP utility for bundling, the disclosure publishing process will optionally unpack the ZIP file into individual attachments.

Solving Business Problems and Managing Risk with Technical Disclosures

In the process of publishing a technical disclosure, you will be prompted for the following elements, many of which are optional:

• Title for primary document in English (required)
• Abstract for primary document in English (highly recommended)
• Information on author/s and related persons, including name/s and relationship/s to document (optional)
• Copyright statement (optional)
• Country of origin (optional)
• Primary language of document (recommended)
• Classification (optional)
• Information on related documents - type, citation, etc.(optional)
• Filename/s and location/s (on your computer) of the primary document(required) and attachment (optional)

In addition, the IP.com publication process will allow you to choose whether the document should contain authorship information. If you select "no authorship" early in the publication process, several steps will be taken to help you assure yourself of anonymous publication, including:

• Your primary document will be renamed and translated into an Adobe PDF file, to remove hidden fields (such as author or company name) that are in certain formats
• This PDF file, and not your original document, will be included in the publication
• Steps in the submission process that request your contact and copyright information will be skipped

Publication of your disclosure

After you enter the bibliographic information that you decide to publish, and after you upload the primary document and (optionally) the attachment, your part of the publication process is complete. Automated processes then perform the operations necessary to digitally fingerprint the documents, package the full disclosure (bibliographic data, primary document, attachment, and fingerprints) into a zip file, assign a unique IPCOM ID to your disclosures, notarize the entire package, index the bibliographic information and the full text of the primary document, and make the full disclosure available to searchers on the web. You receive notification of the publication of your disclosure via e-mail, usually within a few minutes of your submission.

For an additional fee you can also have all or a portion of your disclosure printed in the monthly paper publication, the IP.com Journal. This Journal is distributed to libraries throughout the world, including the Library of Congress. It is also distributed to many major patent offices worldwide.

The IP.com disclosure submission process is uncomplicated, yet sufficiently flexible to be more than adequate for all your technical disclosure needs. Additional information is available on our website, but if you have any questions that remain unanswered, or want to set up a corporate account, please feel free to contact us.

Flexible, controllable technical disclosures

Anonymity - Published technical disclosures have several unique advantages relative to other publications. For example, unlike conventional publications, disclosures can be published anonymously, allowing an author to safely disclose information that might otherwise be useful to a competitor's intelligence function or that could be offensive to a business partner. Clearly, certain instances of the customer/supplier control tactics might be quite problematic if your publication could be linked back to you.

Speed - Another advantage of the published technical disclosure is that it can be published extremely rapidly (relative to peer review publications). In fact, technical disclosures can be published in minutes, as opposed to weeks or months. Every day counts in matters pertaining to publication of inventions and patentable technology, since the outcome of patent prosecution and interference actions often depends on differences of days or weeks.

Format Flexibility - Even the formats of published technical disclosures can vary significantly, depending on the particular goals of the author and the complexity of the disclosed technology. The length of disclosures ranges widely, and many can be found that are less than a page long although some are many pages. A typical disclosure is one or two pages in length and often contains nothing other than a title, an abstract, and a description of the invention, although it may also contain graphs, chemical structures, process charts, citations, tables of data, etc.

Content Control - Finally, since they are not subjected to peer or editorial review, the author has full control in determining the content. This should be used to your advantage in your writing. For example, you can choose which pieces of an invention to disclose and which to keep secret. Or you can provide market information regarding the potential value of the invention if your purpose is to advertise your pending patent. You can choose your context and citations based on how you want readers to think about your technology, or you can suggest wide ranges of applications. It all depends on your goals in writing the disclosure, as the next section describes.

Technical disclosures fall into one of three general categories, based on the goal behind the disclosure:

a) Impacting future patentability of an invention via anticipation or lack
of novelty
b) Impacting future patentability of an invention via obviousness
c) Not aimed at impacting patentability (for example, disclosures aimed at
promoting technology for licensing)

a) Impacting patentability via anticipation

In order for a publication to anticipate an invention, the publication must be "enabled" and must describe the exact same invention. But what is enablement? For your disclosure to be considered "enabled," it must describe the invention in sufficient detail to enable a person having ordinary skill in the art to carry out the invention without undue experimentation.

To provide enablement, certain characteristic content is usually included in a technical disclosure. For a composition of matter invention, writers often include relevant synthetic procedures, formulas, equations, experimental conditions, compositions, etc. For a method or process invention, it is often useful to include flow charts, diagrams, or chemical equations. A disclosure describing a machine invention will usually contain diagrams and figures showing the essential elements of the invention. An article of manufacture invention will normally contain figures of essential elements. In lieu of including these items, it is permissible to include citations to these enabling items if they exist in other publications.

Generally, there is no compelling reason to publish this type of disclosure with full authorship. Indeed there are reasons to argue in favor of anonymous publication, including the possibility of straining important business relationships if the disclosure catches the attention of customers or suppliers, and the possibility of facilitating competitive intelligence against your company.

b) Impacting patentability via obviousness

A patent will be rejected if prior art makes the invention obvious. The wording of section 103 of Title 35, United States Code, is typical, indicating that a patent should not be issued "... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains..." Disclosures aimed at an obviousness rejection are the most common type. A patent examiner can combine multiple prior art references to arrive at a rejection based on obviousness. Therefore, brief disclosures that do not contain a lot of detail, and are not enabled, can still be effective in preventing a future patent. The possibility of an obviousness rejection gives rise to many short technical disclosures that are little more than a brief description of an idea. However, patent rejections based on obviousness may be somewhat easier to

Solving Business Problems and Managing Risk with Technical Disclosures defeat than those based on novelty. The reason for this is that in the case of obviousness rejections, certain secondary considerations can be taken into account to demonstrate non-obviousness. These secondary considerations include indications that others have previously failed to solve the problem solved by the invention; the invention solves an unrecognized or otherwise insoluble problem; the invention enjoys rapid commercial success; the invention solves prior inoperability; or the invention solves a problem in a way that is contrary to the prior art's teaching.

Thus, it is fair to say that in terms of potential for preventing a patent, a more detailed disclosure is generally better. Nevertheless, the extra effort involved in writing a fully enabled disclosure and the additional amount of information disclosed to competitors must be carefully weighed against the benefit. Since an examiner can combine multiple references to arrive at an obviousness rejection, it can be beneficial to include references and/or citations in your disclosure to increase the likelihood of an examiner finding related prior art. However, this is far from being a requirement, since the examiner may combine your disclosure with prior art you don't reference, and in ways you can't currently imagine.

As with disclosures aimed at impacting novelty, there is generally no compelling reason to publish this type of disclosure non-anonymously.

c) Not aimed at patentability

Many technical disclosures are published that are not aimed at preventing future patents by others. Goals of disclosures that fall into this category include promotion of licensable technology, luring competitors into adopting your patent pending or patented technology, or promotion of a technical standard. Due to the diverse nature of disclosures in this category, it is not possible to provide guidelines on format or style, since the specific goals and subject matter will dictate the appropriate format and content.

Clearly, if the goal is related to overt promotion of technology for licensing, it is important to publish non-anonymously and include contact information in the appropriate bibliographic fields during the publication process. In this sort of situation, it is also important to use an industry-standard lexicon to help interested searchers find your disclosure. For the same reason, it is useful to include references to appropriate categories and/or product names.

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)

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

• Customer/supplier control
• Technology standard promotion
• Pied Piper (covert standards promotion)

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.

For our purposes, the invention review process represents an organization's work process for assessing what should be done with new inventions and defining the scope of any patent application. It is typical for an IP management team (with input from appropriate R&D, business, and legal management) to handle this work process. It is in this domain that a clear understanding of the power of technical disclosure can save hundreds of thousands (or even millions) of dollars in fees associated with patenting technology that you might eventually discover is of marginal or no value. Retain your right to use your non-patented innovation At the time of invention review, you have some tough choices to make. The prohibitive cost of obtaining patents will force you into separating innovation between those which are deemed to be critical to your business and those which are not. Resources are limited - you have to make sure you fight the right fight!

Nevertheless, you have to be careful. Although the innovation you don't patent is deemed non-critical to the operation of your business, it doesn't mean that it wouldn't cause inconvenience and expense if you were prevented from using these inventions due to a competitor's patent. If a competitor obtains a patent on an innovation you failed to patent, you have three options. You can try to invalidate the patent, which will lead to a costly trial (in terms of both time and money). You can continue to use the innovation (and pay licensing fees). Or, you can devote time and money into developing ways to work around the patent.

The far simpler and more cost effective way is to prevent a competitor from obtaining a patent in the first place. At the time of your invention review, release your non-critical innovations to the public via a technical disclosure. This will establish your innovation as public domain, and prevent others from obtaining patents that can block your use.

When trying to decided whether to patent or publish, there is one highly effective question that can help you decide which is the better course: "If someone were to infringe this patent, would it be worth my while to defend my patent rights in court?" Certainly, it is unwise to spend more in litigation than you could hope to gain in judgments, royalties, and licensing fees from an infringer. And if your patent is not worth the millions you would spend defending it, is it worth the tens of thousands you would spend to acquire and maintain it in the first place? These questions are worth asking, since for a small fraction of these costs you can protect your freedom to practice your invention by publishing a technical disclosure.

Patent enhancements and new uses

Your research and development program not only creates core innovative technology, it also matures the use of the technology in the context of products. Many of the innovations discovered in this innovation development process are patentable, even though they are only incremental in nature and fully dependent upon the core innovation. If you do not protect these inventions, picket fencers might patent them and negatively impact your freedom to practice your own innovation. A well-designed picket fence can even block your approach to the marketplace. But does it make sense to spend tens or hundred of thousands on application and maintenance fees for innovations that don't really need individualized protection?

A more cost-effective approach is to patent fundamental technological advances and then use inexpensive technical disclosures for incremental innovation. This standard defensive disclosure tactic can prevent the patents others would use to build picket fences around your patents. By surrounding your core patent with disclosures you effectively lock out all others and leave your patent as the only exclusive technology in the space. In effect, you expand the scope of your original patent by making it obvious how to use the protected technology in actual applications.

As with incremental improvements of fundamental technology, you can publish all new uses of an invention to protect your freedom to practice. This ensures that your original patent extends its protection into areas of new application. Using technical disclosures as a barrier against picket fencing also improves your position in licensing negotiations. Since your patent is well protected, forced cross-licensing can be prevented, and you can dictate the terms. During your invention review, you should ask yourself the question, "If I could be sure that nobody else can patent this invention, would I actually need a patent?" If your other patents provide you the leverage you need, then publish a disclosure to protect your freedom to practice, and save yourself many thousands of dollars in the process.

Old or obscure prior art

Opportunity for this tactic often arises when obscure prior art is identified during a prior art search performed in preparation for filing a patent application. It is particularly pertinent in situations where such prior art causes you to reduce the scope or even give up the idea of filing a patent application. In this situation, it is essential to make sure that patent examiners can find the obscure prior art that you found as they consider applications from your competitors. Essentially, this takes the legacy document best practice one step further to include old prior art anywhere in the world. The fact that prior art is already in the public domain does not mean an examiner can find it during a prior art search. A hidden reference is of absolutely no value in preventing a bad patent from issuing. Rather than risk the time and expense to fight such a patent, a technical disclosure of old prior art (including the date of the original publication as well as a reference to it) will bring the old prior art to the attention of examiners. If copyright is a concern, a summary of the prior art reference can be published in the disclosure with a reference to the original. A common example of this tactic is publishing summaries or translations of foreign-language prior art references. Awareness of such a foreign language document may have caused you to abandon hopes of patenting a given technology, yet it is likely that others, including examiners, wouldn't find the same document during their prior art searches, and thus a competitor could patent the technology. "Since I cannot patent this technology, shouldn't I make sure others can't as well?"

Technical disclosures originating at the patent application and prosecution stage

As a point of reference, the patent application and prosecution stage begins with preparation of new patent applications, and includes the application prosecution stage. It includes decisions made during the application drafting stage as well as those made based upon developments that occur during prosecution of the patent application. Many of the best practices in this section increase the value of your patent while others help you maintain your freedom to practice the ideas.

Dream patent

Very often, the patent you want is much broader than the one the examiner will allow. You start things off by applying with the broadest claims you think you can get, and the examiner fires back, requiring you to narrow them. Perhaps you iterate a few times before coming up with claims that are as broad as you can get, yet narrow enough to satisfy the examiner. And sometimes, you find it useful to break an original application into several splinter applications that cover various fractions of the original innovation. This process is necessary, but it often leaves you with much less protection than you originally expected, and it also leaves you with a decision. Indeed, it is possible that there are elements of your original idea that remain unprotected by your patents and are exposed to patenting by a competitor, either in the original patenting jurisdiction or in another. Perhaps this is even intentional - you decide it is too expensive to pursue all of the splinter applications. Thus a defensive tactic in such a case is to create a dream patent for the purpose of publication. "If I could claim everything in one application, what would I claim?" The dream patent could be the original application, or it could be even broader. By publishing this dream patent, you assure yourself that there is no component of the idea that could be patented by a competitor who thereby invades your turf and turns your development effort into an IP nightmare.

Early publication of patent applications

In most cases, patent applications are published 18 months after filing, and in the United States, applicants may request early publication. Nevertheless, in all cases there is a significant lag time between your submission of an application and the time that it becomes searchable and effective as prior art. There are several cases where it is advantageous to publish new applications immediately, rather than waiting for them to be published by the patent offices. For example, immediate publication of your application helps to ensure that a foreign patent cannot be granted during the time that your application is held in secret by the first patent office. Otherwise, it is possible that a foreign patent will be granted to a competitor, and your only recourse would be expensive litigation to invalidate the competing patent. Since you already filed for patent protection, your bar dates will not be effected, but you receive immediate protection from the risk of the expense of foreign litigation or interference actions.

Secondly, early publication can be desirable in cases where you wish to promote the patent-pending technology for licensing. The early publication can be used to inform potential licensees of the existence of your technology and the associated pending patent, long before they would find it by searching patents. This can be especially useful in areas where possible licensees are not necessarily known by the inventor and cannot be easily located. This practice is extremely useful to universities that wish only to attract licensing revenue, rather than to create products based on the technology themselves. In another strategy, often referred to as the "Pied Piper" tactic, one can publish technical details of pending patents (this time without disclosing that there is a pending patent) in order to influence other companies to adopt the technology before the patents are granted or the patent applications are published. Once these companies have adopted the approach you suggest in the disclosure, they will be committed to the technology claimed in the patent applications. When the patents are finally granted, the early adopters will have very little leverage in licensing negotiations.

Publish patent rejects

If the patent office rejects your patent and you decide not to pursue it further, you may be at risk of a competitive patent issuing under a different patenting jurisdiction or merely under a different examiner.

You can mitigate this risk by publishing a technical disclosure containing the rejected application, optionally along with the examiners comments describing the reason(s) for the rejection. By publishing the reject, any subsequent patent has to be novel and non-obvious in light of your application and the examiner's
comments and citations as well.

Technical disclosures originating in technology/business review

Technology/business review represents the ongoing process of managing R&D, new technology, innovation, and the competitive technical landscape. Examples of disclosures originating from this point include technical disclosures initiated by:

• Research scientists or production engineers during the course of routine work
• Cross-functional groups in business units during status update meetings on ongoing R&D projects
• Marketing managers who notice threatening patents by competitors

Many other examples exist; these are intended to be illustrative of the broad nature of the technology/business review category. Also, due to the breadth of this category, many of the tactics in the other sections will be applicable during technology/business reviews.

These tactics can substantially alter the texture of a marketplace by influencing the balance of power among your business partners, your competitors, and yourself.

Supplier control

There are two types of competitors to a business. First are the traditional competitors that compete with you for market share. Second are the complementary product developers - those who you might partner with to create value but with whom you also negotiate to maximize your share of the revenues. Patent ownership provides a key leverage point for relationships with complementary product developers (such as your suppliers, partners, or those you supply to)
since patent holders can turn themselves into sole-source providers. However, an innovation that your partner could patent to your detriment is often not the sort of invention that you would want to patent. Perhaps your getting a patent on the technology would damage your relationship. Or perhaps the invention is merely in an area in which you have little direct interest. Such innovation that is created in connection with complementary product developers or partners should be immediately (and perhaps anonymously) placed into the public domain. A well-placed technical disclosure will prevent your supplier or partner from patenting the innovation and thereby obtaining a sole-source position.

For example, you co-design a new type of packaging material for your product that you would like your packaging supplier to develop and provide to you. If you publish the various aspects of that invention, you can prevent your supplier from obtaining a patent. Publishing the invention does not prevent your supplier from using the invention, yet if the supplier fails to deliver for other reasons, you would still be free to obtain the packaging from another supplier willing to use your invention. In some instances, you'll want the exclusive protection granted by a patent. However, in many situations, if the innovation is something you don't intend to produce yourself, or if you did not invent it yourself (i.e. the supplier invented or assisted in the invention), you only need the assurance that you can use the innovation freely.

Bottom line, sometimes patents will be necessary, but when your motivation is to secure your freedom to use the innovation, technical disclosures fit the bill and the budget.

Customer control

As is clear from the previous tactic, IP can provide serious leverage to your supplier, and you need to protect your interests. Looking the other direction
along the supply chain (i.e. toward firms for whom you are the supplier), we
find additional danger and opportunity.

A customer who patents profitable uses or new applications of your products can control the market for your product. A customer that patents lucrative products based on new uses of your components can increase his or her profits and decrease your product outlets or limit your market.

Your only choice is to partner with your customer (who now has premium bargaining position) or forego the opportunity as they partner with vendors who produce similar products to yours. In either case you lose while you watch your competitor get the lucrative contracts that should have been yours. Would you like to avoid being controlled by one of your customers and retain multiple conduits to the ultimate market? You could keep ahead of your customers by patenting applications of your products, but this could be considered offensive to your customer and seriously interfere with your relationships. Besides, is it really necessary? For far less cost you can create and anonymously publish technical disclosures that keep your marketplace free and allow you to avoid being controlled by your customers. Then you can leverage your core competencies as a dominant manufacturer, a well-connected distributor, or a well-branded marketer to compete and succeed in the marketplace.

Review your products and the customers they service. Are there patentable innovations that could limit your conduits of output? Publish the innovations before someone else patents them. Is a customer of yours serially patenting innovation based on your products, keeping potential clients out of your market space? Open up the space (and your market) via a broad, visible, (and possibly anonymous) technical disclosure.

Extend the reach of your patents by covering new uses of existing technology

Your patents were carefully constructed to give you the most extensive coverage you could imagine - at the time of application and within the limits of existing prior art. At the point of a technology review, your innovation has been in the marketplace for a while and you've learned more, but your patent remains the same. Every day your patent is at risk of losing potency as competitors have the opportunity of patenting new uses for your technology.

Suppose, for example, you have created a new jet engine, designed for increased thrust. Your field-trial engineers note that the newly designed engine uses very little fuel while idling. A disclosure that references your patent and shows how to leverage the invention in a significantly enhanced turbine for an army tank could extend your patent into a lucrative licensing area, since defense contractors need your technology. On the other hand, if you don't publish this new use, a defense contractor could patent around your invention (for his own uses) and seize the upper hand in licensing this technology in his own domain.

Thus, at various stages of review, you should take the opportunity to update the scope of your patent by conceiving and publishing new uses of your technology as technical disclosures. Ask yourself, "What could someone use my technology for?" This tactic provides the mechanism to ensure that the only patented (and licensable) technology within your domain is your original innovation itself.

Create/support a technical standard

Many companies benefit from the existence of established technical standards. Disclosures can be used effectively to create or promote technical standards, thereby allowing you to benefit. Typically, there are two types of entities that benefit from the existence of a technical standard. The first type is the company that is, or could be, the creator or producer of the technical standard. The second type relies on the technical standard for development of products that will be more readily adapted by the market.

If you have created a technical standard, an effective use of technical disclosures would be to make freely available any innovation that makes your technology easier to adopt, cheaper to implement, or more useful to end users. Patents in this area could be counterproductive, as third parties may see the space as being too locked up to facilitate development, and they may then choose to support other competing standards.

If you rely on a specific technical standard, you can publish technology that increases its foothold, thereby potentially increasing your overall customer base. This is the principle that has driven much of the development in the Linux open-source community, where software developers produce tools to promote the operating system in order to increase the potential subscriber base for their other software. Again, patenting in this space may deter others from adopting the technology, and actually do you more harm than good.

In either case, technical disclosures can provide a mechanism for increasing your market share in a space with defined technical standards. Unlike patents, the anonymity that is possible with technical disclosures allows you to develop and promote up and coming technical standards without alerting others to your related efforts. This can be a powerful tool in developing new technology without suffering losses in competitive intelligence.

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.

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?

No one can argue against the power of a patent. Patents are integral to any technology company's IP strategy. But some would suggest that you patent all your innovations. In fact, as suggested by the statistics discussed earlier, some companies are currently pursuing this approach.

However, it is simply cost prohibitive to patent every idea. Even neglecting downstream costs such as maintenance fees, your initial cost (for legal and application fees) in a single patenting jurisdiction is $10,000-$15,000 for a relatively simple patent, and up to $25,000 for a patent of moderate complexity. If you want patent coverage in several foreign jurisdictions, you should expect to spend at least $35,000-$60,000, just for the first few years of coverage! At these prices it's important that you have a revenue or financial plan for each patent. There are some patents that are worth every penny of this figure, considering that they are fundamental to business lines worth millions in annual revenue. So go ahead and pay the $250,000 for worldwide, lifetime patent protection on these innovations.

The more challenging question becomes: are all your patents worth that much? Certainly the fundamental innovations that define your market and guarantee your margins are of huge value, but what about the incremental inventions, the new uses of your old technology, the many inventions that only build on your preexisting intellectual property? Perhaps you can patent everything, but is it really cost-effective and efficient? Is it really necessary?

Ignore your innovation?

Some firms do nothing with their innovation, but the risk associated with this policy is both obvious and enormous. Even so, most firms take this risky approach for a significant fraction of their inventions, and only 10-20% of their patentable ideas actually become part of a patent application! What happens to the other inventions? Deemed less important, or not worth the cost of a patent (correctly), or merely not very interesting to the scientist or engineer involved, the innovation gets shelved... and remains at risk. Such companies' survival depends on luck, or on their competitors sleeping at the wheel. The downside costs if you pursue such a policy can be huge! In using your own, unpatented technology, perhaps you infringe someone else's patent and are forced to pay damages and royalties - directly to your competitor. Or perhaps you discover the competitive patent yourself, and choose instead the pain of redesign, paying dearly in time to market, in R&D expenditures, and even in marketing costs for affected products.

Or maybe you were first to invent, yet your competitor got a patent anyway; then you would have to decide how much it is worth to invalidate the bogus patent... is it worth the $500,000 to $1,500,000 to get through the discovery phase, hoping to settle out of court? Is it worth the $1,500,000-$2,500,000 to complete the jury trial? And in the meantime, your business is stalled by temporary injunctions!

In today's IP climate, most companies recognize that doing nothing with their innovation is a recipe for disaster. Even postponing decisions on what to do with an invention creates significant, and often unnecessary, exposure. However, many companies still allow many inventions to be shelved - unpatented, unprotected, at risk.

Hide behind a trade secret

Another option is to try to keep your innovation as a trade secret. Trade secret law offers limited protection in circumstances where the innovation is not obvious to the public and where you can demonstrate that you put adequate effort into keeping it a secret. The value and enforceability of trade secrets is called into question by the significant increase in employee mobility and the ease of information transfer, coupled with a high legal standard for security measures and protective procedures, and the bent of the courts to protect employee rights. There is no trade-secret protection for innovation that can be reverse-engineered; a competitor can independently discover your invention and use it, or even patent it. In reality, with today's aggressive competitive intelligence tactics, your secrets of today may very well be your competitors' patent-pending products of tomorrow.

Trade secret protection is of value in a few situations, but it is simply inappropriate for the majority of your innovative efforts.

Publish a technical disclosure

So if doing nothing with your innovation is too risky, and trade secrets are unsuitable for widespread application, and patenting everything is cost prohibitive, what options remain? Fortunately, there is another way. Technical disclosures provide an inexpensive means to protect your freedom to practice your innovation, effectively reducing the significant cost of patenting and removing the huge risks of someone else getting a patent on your ideas. What is technical disclosure? Quite simply, it is the intentional and purposeful publication of innovation into the public domain. Thus, technical disclosures create prior art which can prevent a related patent from issuing, based on the typical requirements which demand that patentable innovation be new and non-obvious. With a technical disclosure (also called a defensive publication), your competitor cannot patent the invention, and you retain your freedom to practice your innovation.

The next blog post in this series discusses some of the technical disclosure tactics that can be deployed as part of a successful IP strategy. Although many companies neglect this area of IP management, most would benefit significantly from integrating these best practices into their overall IP strategy. You will find certain strategies relate more directly to your business than others, and certain strategies will be appropriate more frequently than others. Be that as it may, it is clear that unless you make optimal use of technical disclosures, you are paying too much, not protecting enough, or worse yet, doing both - paying too much for too little protection.

Innovation has become a primary driving force in industry worldwide. Companies have been racing to develop their IP portfolios by scrambling to gather the most extensive patent coverage they can afford. New companies need to make their mark early, or they risk getting left behind, whereas established companies need to maintain and build upon their current IP portfolios if they want to remain competitive. This is reflected in the overwhelming 187,017 patents granted in the US patent office in 2003, an astounding 70% increase over 1993 (see chart below), and the USPTO expects these records to be broken each year. The trend in patent applications predicts that the escalation in patenting will continue. Applications in the year 2003 hit 366,043, a 94% increase over 1993.

Everyone agrees that patents are one of the cornerstones of free enterprise, but experts are beginning to raise concerns that the patent explosion is opening up opportunity for some very costly and serious problems down the road. Fortunately, new solutions based on the strategic use of technical disclosures are arising to combat those problems.

Overburdened examiners

The patent land grab is putting an extraordinary burden on the world patent offices, which try valiantly to absorb this explosive growth, yet are overwhelmed by sheer numbers. As a result, overly broad, and arguably bad patents are being issued every day, due in large part to the fact that examiners simply don't have the time to locate and review all the potential prior art before issuing a patent. Therefore, many of these patents would not hold up against an invalidity challenge in the courts. Indeed, thousands of patents are being contested, putting a heavy burden on the federal courts. In a perfect world, patents would never be issued on inventions previously placed in the public domain. Bad patents do issue, however, because examiners are simply unable to spend the time required to locate all relevant prior art in a given case. In fact, it is unlikely that innovation published to any number of disparate publications will ever be seen by examiners, much less be used to prevent the issuance of bad patents.

IP.com's introduction of a centralized database of published prior art, and IP.com's cooperation with the world patent offices to provide them with direct data feeds and/or web access, tremendously increases the chances that a particular piece of prior art will be found by examiners when needed.

Well-placed technical disclosures, therefore, are valuable on two points: first, to support examiners in preventing overly broad patents from issuing; and second, in cases where overly broad patents do issue, to be available and admissible years later at trial to form the basis for an invalidity defense in a patent case. When balanced against cost, it is far more important to prevent overly broad patents from issuing in the first place than to deal with postgrant consequences, such as litigation, millions of dollars in legal fees, lost time-to-market from adverse injunction rulings, downstream (post launch) product/service redesign, and loss of freedom to practice innovation.

Having an invalid patent get issued (to you) is worse than the application being rejected outright because it gives the holder of the patent a false sense of security. Invalid patents can cause the holder to make strategic and costly decisions that could later become fatal when the patent is overturned, and at great legal expense.

The frantic patent race is worsened by an aggressive tactic called picket fencing. To understand this ploy, suppose you have patented an invention that is key in a particular market space. A competitor who wants a piece of the market can surround your patent with a series of his own patents, each of which excludes you from some extension of your patented technology - whether that be an incremental improvement, a new use, or a necessary step in the process of bringing your technology to market. In so doing, he forces you into a cross-licensing agreement and reduces your market share.

One way to combat the picket fence would be to aggressively patent everything around all of your patents, but this would require you to acquire many patents of dubious value. A far superior approach is to engage in your own picket fence defensive disclosure tactic, in which technical disclosures are written by you for innovations, new uses, and developments required to bring the technology to market or to expand the market. The disclosures obstruct competitive patenting. Since your patent is the "core" or enabler of the defensively published ideas, you effectively protect your patent and extend its protective scope as the technology, its development, and your products mature. Thus, not only do you defend your patent, but you also protect your freedom to practice, your market, and ultimately, your bottom line.

High priced security

The mad dash to the patent office has put an extraordinary burden not only on the patent offices, but also on corporations that have to bear the compounding expenses. The cost involved in processing even a single patent is exorbitant. To acquire and maintain worldwide patent protection costs on the order of $250,000 over the lifetime of a single patent. Considering that most corporate giants are patenting hundreds, even thousands of innovations each year, patent budgeting can become outrageous.

However, the high price for remaining competitive in the high-stakes IP game can be controlled through skillful IP and prior art management. Roger L. May, general counsel, president and CEO of Ford Global Technologies Inc., has affirmed that position in a recent review in Corporate Legal Times where he stated, "There is no difference between being a good intellectual capital officer and being a good businessman."

So how can you succeed in the frantic IP world of the new millennium? Certainly, continued innovation is required - indeed your survival depends on it. The question is never whether to innovate, but what should be done with your innovation to optimize the business result.

Similarly, today's leading edge companies need to implement an awards program that incorporates recognition for technical disclosures that become published as prior art. There are multiple and varied reasons for publishing disclosures. An awards program should take these possibilities into consideration in determining how to structure the program. Without a program to recognize the publication of technical disclosures as prior art, researchers will only be motivated to chase patentable innovation, however expensive it may be to sustain, regardless of how it helps advance the business goals of the company.

Awards for technical disclosures can be designated in any number of ways:

1. Provide awards for any published disclosure.
2. Provide awards for disclosures directly related to an existing company patent.
3. Provide special awards for developing picket fence disclosure strategies to protect critical or key patented technology for the company. This reduces the cost of protecting new applications of a patent while preserving the companies right to market and sell into those same markets. Since the companies core patented technology is fundamental to the products in these markets the disclosures are the most cost effective way to expand protection.
4. Provide awards for disclosures that keep the companies supply chain open. For example, if you develop an idea for a supplier to build into a product they supply to your company, provide awards for the public disclosure of that technology so the supplier cannot leverage your idea against you at some future point. This enables you to change suppliers (if circumstances demand it) while ensuring you can get the product features and functions that you need.
5. Put an award program in place to ensure that all marketing and product literature is published as part of a repeatable process. This information is already deemed "public," so why not ensure that it defeats any potential patents by your competitors.
6. Provide awards for technical disclosures related to technical standards that your company is trying to seed into the marketplace.

Readers of your defensive publication have interests in that publication ranging from simple curiosity to the serious need-to-know. These readers may even have a stake in the success of your position. You could tap into the collective wisdom of these readers by providing them with a ready means to add commentary.

By combining the commentary of others with your invention disclosure, a patent examiner will find more prior art in one place than he or she would without the commentary. Because of the vast pool of relevant prior art throughout the world, coupled with the extremely limited amount of time an examiner has to search for prior art, such aggregation of relevant comments could block competitive patents that would otherwise issue. After a few experts have added their comments and thoughts, your disclosure would become immediately more important to examiners. This ongoing dialogue will also increase the visibility of your publication by expanding its relevance to a broader range of searches.

In addition to helping patent examiners block competitive patent applications, exposing your invention disclosure to comments from other experts could be personally valuable. You could actually create a forum and encourage interaction from all over the world on your innovative ideas for the purpose of advancing the technology. You might discover ideas that build upon yours. You might establish relationships with future co-workers or friends. Commentaries can lead to discussions which can lead to collaborations which can lead to earth shattering innovation!