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.
