Over the past few decades many corporations have seen exponential increases in costs associated with their IP portfolio and an increased drain on technical resource to support a “patent everything we invent” approach. Increasingly defensive publishing is being accepted by more industries and is becoming commonplace in companies where IP and the costs associated with it were once of little concern. In the first post of this two part series we examined routes for defensive publication, here we will discuss how defensive publishing can replace several common patenting strategies: cost limitation, picket fencing, freedom to practice, trade secrets, and patent races.
Perhaps the most common reason for companies to choose defensive publishing strategies over blanket patent tactics is to limit the cost of maintaining the portfolio. By simply defining inventions into either core patents and supporting IP many companies can offset their legal costs significantly while at the same time having limited if any effect on the overall strength of their patent portfolio. For a company utilizing a defensive publishing strategy the supporting or fringe IP could be published in trade journals or commercial publications to protect against competitor ownership while limiting cost of maintaining the real patent portfolio.
Picket fencing or mine-fielding is the process of filing variant patents around a central patent core. When executed properly, the picket fence creates a high barrier to entry for competitors and greatly restricts their ability to practice in spaces adjacent to the core inventions. In most cases the picket fence patents are of much weaker quality and, if the central patent is well-executed, have limited value unless there is the intent to produce the invention described in the patent or if the picket patent can be delivered independent of the central patent claims.
Defensive publishing alternatives to picket fencing practices follow the same systems as cost limitation strategies where possible inventions are described as either core or peripheral. Peripheral inventions are then published into the public domain, preferably in an easily searchable database and even more preferably in a publication likely to be discovered within a patent office examiners search report. The point of picket fencing is primarily as a deterrent and so public domain disclosure in hidden or obscure publication routes is of limited use within a defensive framework.
Freedom to practice
Often corporations will make their profit, not by inventing something new, but by taking a fringe or known products mainstream. But what happens when that fringe product is really really fringe? Consider this scenario; Company A discovers an unpatented widget on sale in Korea they believe it has the potential to be a blockbuster product in the USA. They begin developing the product for a US launch, modifying the designs, building manufacturing capability and planning the marketing strategy. An IP screen late in the process identifies a recently published patent from Competitor B which describes the popular widget and claims ownership of the invention. How can this be? The product has been on sale in Korea FOR YEARS! Over the next few months Company A rallies their legal department to plan their defense. A supply director delays approving a production line until “after the legal issues have been resolved” and the feeling from the business as a whole is frustration.
Fundamentally the patent system isn’t broken, Competitor B’s claim over the invention is void and eventually will be rescinded but the time and cost to Company A is significant and real. In this case had Company A employed a defensive publishing strategy known as prior art elucidation they could have avoided the frustrating scenario outlined above. Given the emergence of ‘patent trolls’ and likely presence of an aggressively patenting competitor in any industry using defensive publishing to ensure freedom to practice can be very important.
The cause of (and solution to) this scenario lies within the patent office who cannot possibly be aware of all prior art and so often will grant patents on inventions that are within the public domain. Ensuring freedom to practice by disclosing the prior art into easily found and searched publications is one way of improving the chance of any future competitor filings being rejected and thus limiting the potential defensive cost. The most suitable although not the most common approach is to utilize commercial publications for the prior art elucidation. Companies such as ResearchDisclosure.com are very well suited to prior art elucidation due to their agreements with IPO member states which improve the chance of the information being found during the search process.
The use of defensive publishing within the context of a patent race is an interesting strategy. Basically the approach allows a company to decide how it wishes to compete, on first to patent terms or on first to market terms. The scenario of a patent race between corporations occurs when a common technology goal is defined and the experimental path to the goal is well-defined. In this instance the companies developing the technology are making an all in bet. Only one company is likely to succeed and the loser is likely to face significant setbacks to its development capacity. By applying a defensive publishing strategy that pushes non-core inventions into the public domain rather than building a patent case the company can get a better return on its research investment and give itself a better chance at winning its all-in bet. Taken to the logical conclusion a company may even choose to publish everything it discovers, as is discovers it, in an attempt to remove any chance of a competitor ultimately owning a strong patent in the field. In this case the company is banking on a level playing field being a better competitive option than the chance of winning the all-in bet.
Unenforceable trade secrets
The use of patents to protect IP that was traditionally kept as trade secrets has increased over the past few decades. This is possibly due to the mobile nature of the modern workforce and internet publishing making trade secrets almost impossible to keep. This trend however has given rise to the problem of the unenforceable trade secret patent. Usually this situation arises when a novel process is patented by a company but the patented process produces an indistinguishable product from the prior art. In this case the patent is close to useless and in the worst case gives away any competitive advantage that the technology advance had generated. The system for defending trade secrets however results in one piece of litigation risk that can be avoided through the use of defensive publishing demonstrated by the following scenario; Engineers at Company A develop a novel processing technique to make their widget at half the cost of the old process. The process leaves no fingerprint other than on the accounts department i.e. the new widget is indistinguishable from the old widget. The lawyers at Company A rationalize that to patent the new process would be of less value to the company than to keep it a trade secret and steps are put in place to maintain this. Five years later a patent on a widget making process is published from Competitor B. The lawyers advise that Company B’s process is substantially the same as Company A’s and that they should prepare some sort of legal defense to ensure that production can continue if a legal challenge were to come about.
Fundamentally, the trade secret process is not flawed, Competitor B’s claim over a process that has been used by Company A for years is void, but the cost of defending a process they have always used is real and annoying. In this case the use of a defensive publishing strategy known as hidden disclosure may have advantages.
Methods for creating hidden disclosure are quite varied but essentially the approach is to place the trade secret into the public domain in a manner that, while being entered into the record as a matter of fact, does not create enough interest or is not accessible to enough people to fully surrender the invention. Methods that achieve this include using the procedures of the patent system itself (withdrawn patents etc) and the use of non industry publications. Maybe even the local classifieds could be a sufficient enough publication to cause a competitor to drop a costly lawsuit?