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We've been following, with great interest, a series of book reviews by patent attorney Stephen Albainy-Jenei at the Patent Baristas blog. His recent review of iProperty by William Barrett, Christopher Price, and Thomas Hunt, piqued our interest with this quote:
Self-described as answering the question, “If I’m serious about strategically deploying intellectual property in a way that benefits my bottom line, what should I do on Monday morning to make that happen?” iProperty tries to set out the concrete details involved in actual implementation and provides executives, managers and attorneys with practical advice for developing and executing a strategic intellectual property plan that will yield a measurable return on investment.
While ordering a copy of iProperty for the company library, we came across a preview of the book on Google Book Search that, beginning on page. 224, contains a chapter on a subject that is key to the business of IP.com Inc. and mentions our company and its prior art database.
Protecting Ideas By Giving Them Away
In this chapter, the authors of iProperty provide a good overview of the strategies of defensive publishing, concluding with a detailed consideration of the critical question, "Where to publish?"
Options for defensive publications range from traditional peer-reviewed journals to dot-com sites dedicated to online publishing. Publication in peer-reviewed journals is desirable, because such publications are important to the advancement of a scientific career, and the critical review such publications afford is important for the advancement of science. Moreover, the traditional requirement of repeatablility in peer-reviewed publications parallels the enablement requirement, helping to ensure that the latter is satisfied. The difficulty with traditional journal publications is that, assuming that they actually agree to publish your submitted article, they can take months to publish, and speed is critical to a defensive publication strategy. If another company files a patent application before the defensive publication becomes public, then the strategy is defeated.
A tempting forum for defensive publishing is the company Web site. However, most standard Web site publishing does not include a method for verifying the date of publication or the authenticity of the publication. Additionally, the content of Web sites is constantly changing, and Web-based searching is still not as accurate as traditional information databases. The world's patent examiners may not identify the publication. If this happens, the competitor's patent application could be examined and granted without knowledge of the defensive publication, and the publication would therefore not have its indended effect (i.e., use by a patent examiner as the basis for rejecting a competitor's patent application).
It should be noted that ideas described in patents but not claimed are also considered published subject matter and are dedicated to the public. One publication option is to describe the ideas to be published in a patent application without submitting claimes that protect the ideas. This option has the advantage that if, during the pendency of the application, the applicant decides to elect to patent the ideas rather than publish them, the applicant may have the option to submit claims covering the ideas. In other words, publishing ideas in a patent application can be a way to defer the finality of a decision between patenting and publishing.
Another option for defensive publishing is IP.com. This savvy Internet-based company, founded in 2000, has created a prior art database that provides a quick and effective way to put defensive publications in the hands of the public. The company has a wide variety of clients, including IBM, Genereal Electric, Motorola, Abbott Laboratories, and Eastman Koday. IP.com electronically date stamps and protects the integrity of each defensive publication to ensure that its publications have legal significance for the world's patent systems. Documents published by IP.com become part of a text-searchable database, accessible to patent examiners in the world's patent ofices. The disclosures also are published monthly in the IP.com Journal to ensure compliance with accepted legal standards. The journal is housed in 35 libraries and patent offices around the world.
Tom Colson, chief executive officer of IP.com, observes that a recent Subpreme Court case, KSR v. Teleflex, heightened the nonobviousness requirement for U.S. patents and, in so doing, made patents and patent applications more vulnerable to defensive publications. In that case, Justice Kennedy, writing for a unanimous court, emphasized that "the results of ordinary innovation are not the subject of exclusive rights under patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts." In taking this position, the Court pushed back on the U.S. Patent Office's recent tendency to grant easy patents, holding that the patent at issue was invalid due to the existence of published patents describing similar devices. Colson points out that, as a result of this ruling, "patents will be harder to get and easier to invalidate." This change suggests that in many cases, defensive publications will be an even more desirable strategy than has been the case in the past. "Simply put," Colson says, "competive patents are more dangerous than your own patents are valuable."
Is your company taking advantage of the defensive publication strategy where appropriate?
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When the story first broke, back in February, we thought there might be more than a possibility of confusion of our company name, 
