Strategic publishing is related to intellectual property rights in that its use is intended to clarify and ensure the inventors right to use their discovery or invention without the need for legal defense. Within a corporate IP portfolio strategic publishing can be used in both a defensive and offensive manner. Over the past two decades there has been a marked increase in the use of strategic publishing especially from the high tech electronics industries who have promoted its use to control their ballooning legal costs. Globally, more companies are beginning to use strategic publishing in its defensive form as part of their IP management process and as a mechanism for driving resource demands out of their innovation programs.
Within the strategic publishing field by far the most common form is defensive publishing. Defensive publishing is simply publishing into the public domain an invention or discovery with the express purpose of making it non-patentable. The rationale for choosing defensive publication over patent filing can be complex and varied but within large companies the driver for this is generally one of three rationales, cost limitation, non enforceability and IP landscape clearance.
Requirements of defensive publication.
In order to be useful as a defensive publication the publication must meet a few simple criteria.
- The publication must be accessible to the public. There have been lawsuits arguing the definition of accessible but generally all media that is shared with people outside the company is suitable including company sponsored literature provided it is circulated externally. An example of this was IBM’s Technical Disclosure Bulletin which was published until 1998 with the express purpose of preventing IBM’s competitors patenting inventions it had developed but had chose not to pursue.
- In order to be useful the publication should be timely. The creation of prior art is very much dependent on when it is published relative to any patented invention. Fast and clear publication is as important to a defensive publishing strategy as it is for a normal patent strategy.
- The date of publication must not be ambiguous. This can be especially important if the proposed publication is web based which can be open to challenge. The best defensive publication strategies utilize printed and searchable journals.
Where to choose to disclose the invention is very much dependent upon the final publication strategy that is chosen but a number of more common options are listed below and assessed against the general criteria above.
Company Promotional Literature.
Publication of disclosures in company literature or the company website has the advantage of being simple and under the control of the company but fails against the accessibility and ambiguity tests described above. In trying to block a future patent claim or avoid having to defend a process or invention in court proving publication date on a company website is unlikely to prevent any case incurring significant legal costs. Company promotional literature also cannot benefit from anonymity which can be important for some defensive publishing strategies.
Company Report Series.
Company report series have been used by a number of corporations in most cases very successfully including IBM’s Technical Disclosure Bulletin, Siemens’ Zeitshrift among others. The benefits and drawbacks are similar to those of company promotional literature.
So called White Papers are often published (usually electronically) in order to disclose information. Their limited circulation means that they often are not suitable as part of a defensive publication strategy unless the three requirements of the previous section can be sure to be met.
Grey literature is the body of presentations, trade posters and the like that companies generate as part of the routine industry networking process they are involved in. Grey literature is very rarely monitored or routinely documented or archived and so does not generally serve the purpose of a defensive publishing strategy. In cases where grey literature has been used as prior art it has generally been accompanied with dated filing with company attorneys which is not generally enough to avoid legal challenges going forward.
There are a number of commercial publications that function specifically as a method for disclosing inventions. The longest running of these is the journal Research Disclosure (http://www.researchdisclosure.com/) which publishes both in paper and electronic form any research that a company may wish to bring into the public domain. Research Disclosure does not require that the author is identified and so anonymous disclosures can ensure that a company’s longer term strategy is not compromised.
The relatively new intellectual property library IP.com (http://ip.com/) is similar to Research Disclosure in many ways but has a stronger focus on obtaining agreements with patent regulators to promote the use of their library as part of the routine prior art search conducted before the granting of any patent. This facet allows defensive publishing an additional strategic advantage of possibly being used to clear IP space in an area where a competitor is active or increasing the likelihood of more obscure prior art being cited in any future search results. More recently other commercial publication portals including Research Disclosure have begun including these agreements within their systems.
One option for disclosing inventions is to publish in peer reviewed journals. While meeting much of the criteria required of a defensive publishing strategy one major drawback is the lack of control over the timeliness of the publication which can often be delayed for months or even years. Unless there is a higher degree of certainty of publication date than is afforded to the average journal this approach is limited in its use.
US Statutory Invention Registration.
In the US there is a provision for an inventor to divulge a non patented piece of IP to the public domain through the request of publication to the Statutory Invention Registration which is maintained through the US Patent Office. The requirements are minimal and benefit from registration within recognized patent classes which in turn improves the likelihood of an examiner finding the disclosure however the registrations are not anonymous. The original intent of the registration was to allow companies who had given up on pursuing patents a means of ensuring freedom to practice.
Since 1999 in the US all patent applications are published into the public domain once 18 months have passed from date of application. Effectively this allows a company a means of creating prior art simply by filing a patent application and letting it lapse. This approach benefits from having a high likelihood of being discovered in any subsequent search procedure however it cannot be anonymous and does require drafting in the form of a patent which means that the initial filing costs to a company are not offset significantly.
Defensive publishing and Osmotic Innovation.
The burden of IP management on a corporation’s innovation program is often significantly large. Producing the data sets that support patents often goes well beyond feasibility evaluation and takes many people out of the core creativity roles they are hired for. By utilizing a planned defensive publishing program corporations can reduce the burden of their IP portfolio and reinvest that resource back into more value added activities. As part of your innovation management program, defensive publishing is a must.