SECURING INNOVATION | The Business Blog of IP.com about Managing Intellectual Property, Patents, Trademarks, and Trade Secrets

Defensive publication is the practice of disclosing details about innovations to the public, thereby preserving the innovation as a public good by preventing others from patenting it. Since a defensive publication makes a description of the innovation available publicly, the innovation can no longer be called new (novel) and thus cannot be patented.

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.

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Patent your innovations

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.

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We all know that prior art searching is becoming more and more important as patents and patent litigation become more and more expensive. We also know that there are zillions of places you can go to find relevant prior art. Some have referred to the process as finding a "needle in a haystack." And, we all know that searchers are willing to pay fees to search prior art databases if the content is valuable. But, one thing that we didn't know, and learned recently, is that search professionals in law firms sometimes find it difficult to cost justify the fee for annual search subscriptions.

At first we were surprised that the subscription search model wouldn't be actively embraced by ALL law firms; a lower per-search fee that could be spread across all clients. That is, of course before we began chatting with law firms about their billing processes. Now, we understand. You see, lawyers, paralegals and search professionals bill their time to clients. Pretty obvious. And, the nature of the billing process is that each minute must be associated with a specific client. Also pretty obvious. And, an annual search subscription cannot be easily broken out and charged to specific clients because each client has different needs??some clients don't even NEED prior art searching. Yes, yes... also obvious. Then why did we only have subscription-based pricing for law firms? THAT'S A GREAT QUESTION!

Anyway, now that we understand the obvious, we have come up with an obvious solution... a special transaction-based contract for law firms (or anyone else that would benefit from this approach). As of now, rather than only offering the annual subscription based model to law firms (which some still prefer), we have a contract that enables firms to pay on a per-search and per-download basis. This makes life easier for law firms, easier for their clients, and easier for us. Everyone is happy!

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Peter Zura's 271 Patent Blog has an interesting post here describing a number of established IP businesses and new business models that have emerged in recent years to provide a broad range of specialized services and products to protect valuable intellectual property.

"It has become increasingly clear over the last couple of years that the "old economy" model for monetizing and managing IP assets has matured into a more robust model. Since the early 90's, only a select group of large patent holders controlled the majority of IP rights, leaving smaller players with little recourse in establishing and protecting innovative IP rights," Zura says. In his post, patent attorney Peter Zura points to a White Paper, A Summary of Established & Emerging Business Models in IP, presented by Raymond Millien and Ron Laurie at the Eighth Annual Sedona Conference on Patent Litigation. In that report, the authors list:

• Patent Licensing and Enforcement Companies,
• Institutional Patent Aggregators/IP Acquisition Funds,
• IP/Technology Development Companies,
• Licensing Agents,
• Litigation Finance/Investment Firms,
• Patent Brokers,
• IP-Based M&A Advisory,
• IP Auction Houses,
• On-Line IP/Technology Exchanges/Clearinghouses,
• IP-Backed Financiers,
• Royalty Stream Securitization Firms, and
• Patent Rating Software and Services.

To that extensive list we'd add our own favorite categoy:

• Innovation Management Technologies

As the authors conclude, these established and emerging business models in IP appear to be here to stay.

In fact, new players implementing the IP business models described herein will come into existence. And, new IP business models will also come into existence. Why? Quite simply, the business of IP (i.e., IP marketplace) itself is not immune to innovation!

To read/download the pdf ("A Summary of Established & Emerging IP Business Models"), click here (courtesy of Patent Troll Tracker)

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Integrating with Existing Software Systems

Seldom can a single software system satisfy the needs of an entire business. Integrating best of breed solutions into existing systems is a requirement of any innovation management system. A good innovation management system processes documents in a wide variety of common formats (such as PDF, Word, Excel, and PowerPoint) and accommodates documents or files in any format. Innovation management requires that the system adapt to the environment, not vice versa.

Additionally, an innovation management system should integrate seamlessly with existing infrastructure, such as leading SQL databases (like MySQL, Oracle, or DB2), mail servers (such as Notes, Exchange, or sendmail), and centralized directory management (such as Active Directory or other LDAP system).

Integrated Prior Art Searching

Although thorough prior art searching should be done by search professionals, innovators and managers often require quick access to limited prior art searching. Providing this means providing access to prior art from innovators' desktops, without the need for advanced search skills.

An ideal innovation management system will provide rapid access to both internal and worldwide prior art by using a document as a search query. This would eliminate the need to have any search skills and instantly empower innovators and managers alike to see the technology and IP landscape related to their own innovation.

Integrated Defensive Publishing

The most efficient means of preventing competitors from obtaining patents is defensive publishing. Unlike patents, that require filing in all relevant countries throughout the world, one defensive publication can prevent or defeat patents worldwide. Many of the most innovative companies in the world have integrated defensive publishing capabilities directly into their innovation management systems. This reduces publishing barriers once a decision has been made to place innovation defensively into the public domain.

Since the ideal innovation management system is already capturing innovation records, and making them rapidly available for decision, an integrated defensive publishing capability can be little more than a link.

This is the eighth in a series of articles on this blog about Best Practices For Successful Innovation Management. For more in this series, see:

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To enhance the use of its innovation, a company should not only consider implementing an innovation system, but also implementing certain work procedures and processes that encourage the creation, recognition, and protection of innovation. Sometimes such work processes are enabled or improved by codifying them in a system. Sometimes the system to implement such processes or procedures, along with assisting with compliance, is the innovation management system itself.

Innovation management can embody workflow rules, such as a document approval chain. Many organizations recognize that good practice requires one or more sign-offs before an innovation document may be utilized or released for any purpose. Decisions should be made to patent, publish, release, or hold secret innovation using a well-defined process. An example process might be a review chain where:

1. An engineer submits a document to …
2. A manager, who then may approve or reject it (possibly after seeking third party opinion) for review by …
3. An innovation committee, who then approves or reject it for handling by …
4. The CPC's office, who then approves or rejects it for publication or holding as …
5. A journal article, conference paper, public presentation, patent application, defensive publication, or internal trade secret …

An innovation management system needs to embody the flexibility to express a variety of workflow rules and actions that are appropriate to the procedures, standards, and culture of individual companies. Such workflow rules can incorporate facilities like email notifications of events, automated reminders, process status and aging reports, and rapidly accessible views to encourage use and compliance.

This is the seventh in a series of articles on this blog about Best Practices For Successful Innovation Management. For more in this series, see:

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Outsource If done correctly, the outsourcing of patentability, freedom-to-operate, validity, and patent landscape searching can result in high quality, concise, and expedient results. Outsourcing can benefit corporate patent counsel, technologists, law firms, and institutions. Before you consider outsourcing these tasks, there are some very important things to look for when selecting a search firm.

Is the search firm prepared?

Any search vendor that isn't familiar with your patent activity upon your first meeting is probably not worth pursuing. All patents are public, and patent applications are public after 18 months in the United States. You should choose a firm that is aggressive enough to have investigated your company, its products, competitors, historical and recent patent activity, as well as its not-patent publications. Preparedness is one sign of competence and a desire to establish a long term relationship. This one characteristic may be the most valuable of all, in that it will ultimately dictate the quality of deliverables and assure that your expectations are met and, often, exceeded.

Does the search firm adhere to an effective and consistent process?

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It appears that China is facing a huge obstacle on matters of intellectual property, namely patents. More specifically, China is way behind in the patent race; not only worldwide, but even at home. If you just looked at a snapshot today, it’s hard to see why. Consider this:

• China has the largest population in the world.
• The Chinese educational system is heavily oriented toward science-based technical training.
• China graduates in excess of three times more engineers - electrical, industrial, bio-chemical, semiconductor, mechanical, even power generation - with bachelor's degrees than the U.S. university system.
• China consistently has graduated more engineers than the U.S., Japan, and Germany combined every year since 1997
• In terms of the size of their economy, China is on pace to overtake Germany in the next four years, Japan by 2015 and the U.S. by 2039

Yet, while the rate of patenting is increasing in China, on a worldwide bases, China is still way, way behind the US, Japan, Germany, France, the UK, South Korea, Italy, and Canada. China is actually patenting at an annual rate of less than 5% of the US. In fact, many individual Japanese and US companies themselves patent more than the entire nation of China on an annual basis. Worse yet, many of the above mentioned countries are exceeding Chinese patents in their own backyard; the Chinese Patent Office.

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Because of the now famous “BlackBerry” patent dispute, the world is beginning to look at patent and prior art searching with a whole new set of eyes. What was once considered a checklist item in patent prosecution and a reactionary item in patent litigation is now being considered an important part of the product development and innovation process. And the really powerful thing about the Blackberry dispute is that it involves three of the top types of patent and prior art searching: patentability (often called preliminary novelty), invalidity (often used in connection with defense of a patent case), and product clearance.

It has been said that if subjected to the strict scrutiny of patent litigation, 50% of all issued US patents would be invalidated. That statistic might be high (and it might be low). But let’s say it’s high. Let’s say that the real statistic is 45% or 40% or even 35%. In each case, that number is way too high. It’s unreasonable that a business should have to buy an asset…a US patent, and only have 50% certainty that they can actually enforce their ownership rights. It’s hard to make business decisions when there is only a 50% chance that your patent is valid …especially when the patent(s) is a critical factor in the business decision. For example, should a venture capitalist invest in a start up that has no revenue, but a large patent portfolio? Should a company consider the value of an acquisition target’s patent portfolio when determining a purchase price? Even if there is only a 50% chance that the patents will be enforceable?

In the BlackBerry case, several of the patents NTP asserted against RIM have been invalidated. Wow! Think about that. NTP invested a lot of money to get the patents in the first place. They received a certificate from the PTO saying that they have a valid patent. Then, after investing even more money to enforce the patents, the patents were deemed invalid because of prior art. Clearly, there are no guarantees. And because of the fact that getting a patent provides no guarantees, a greater emphasis on the patentability search might be warranted

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Before investing in a new technology, product, or company, have you thoroughly investigated all relevant patents, patent applications, and technical publications that might inhibit your growth or be worthy of in-licensing or acquisition?

Types of searches

Patentability/Novelty Search

Patentability searches are typically performed before a patent application is prepared in order to determine whether or not the invention will be patentable, as well as how broad the invention protection may be. Patentability searches typically include U.S. and international patents, published patent applications, and non-patent literature (e.g. proceedings and technical publications). We also offer USPTO accelerated patentability searches.

Freedom to Operate Search

Freedom to operate searches identify potential patent barriers to the commercialization of products or technologies. A freedom to operate search involves identifying whether there are any relevant, unexpired patents, and then analyzing the claims of those patents to determine whether they could prevent the manufacture and sale of a proposed product or technology.

Validity Search

Validity searches can be useful as a defensive tool when a company is concerned about infringing a particular patent. A validity search attempts to uncover issued patents or other published prior art that may render a patent partially or completely invalid. In contrast, validity searches can also be used to invalidate an in-force patent thereby allowing a company to practice that technology without paying royalties to the firm that holds the rights to the patent in question.

State of the Art Search

The state of the art search is a broad search on everything that has been done in a given art. State of the art searches are useful if your company is considering entry into a particular domain of art. State of the art search results can provide a basis for making critical market decisions. These results can also be used as a navigation framework for product and process design.

Technology Environment Analysis (Competitive Intelligence)

IP.com leverages techniques such as concept clustering and text analytics to quantify patent portfolios relative to activity in the marketplace. The tools and techniques present a set of actionable intelligence by illustrating patent activity in the market relative to a corporation's patent portfolio and R&D activities. Patents are "clustered" on the basis of similarities derived from predeter- mined patent metrics. Our specialized analysis software coupled with our many years of experience in the IP space allows us to provide you with the highest quality results available.

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