The Role of Defensive Publications in Intellectual Property Protection

Justin Hasford, an associate with the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner LLP (Washington, DC) explains that a defensive publication places the knowledge that your lab has developed in the public domain, enabling it to serve as prior art preventing other companies from obtaining patents on the same technology. For a document to be an effective defensive publication, it must describe, anticipate, or make obvious all the elements of the claimed invention.

This is embedded in U.S. Patent and Trademark Office (USPTO) regulations and patent law, particularly 35 USC 102 (a) and (b), which states “A person shall be entitled to a patent unless,

The invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States…”

Using defensive publications must be done within the context of your company’s goals according to Dr. Sandra Thompson of the Buchalter Nemer law firm (Irvine, California).¹ These include:

To prevent competitors’ patents from issuing
To create technology licensing and sales opportunities
To either stop or facilitate patent litigation
To protect one’s patent portfolio without spending patent application funds
To save money

A printed document is considered a defensive publication “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinary skilled in the subject matter of the art, exercising reasonable diligence can locate it.”^1,2 In particular, Hasford notes that a firm should issue defensive publications when “it perceives a competitive threat from another company likely to apply for a patent.”

Before discussing the various types of defensive publications, let’s demonstrate their value by considering various strategies for using them.

Strategies

How can you prevent competitors from using patents to block your own firm commercializing its innovative products and services? The key is to bring your technology into the public domain where it may be used as prior art to prevent other firms being issued blocking patents that prevent your firm from commercially practicing the technology. One way to prevent blocking patents is to file your own patent applications. These are now published eighteen months after filing. However, this is an expensive strategy due to the costs of filing patent applications. Keeping your technology a trade secret, while feasible in some areas of chemical process technology, does not bring your innovation into the public domain.

If all you desire to do is to protect your firm’s ability to commercialize and profit from technology your lab has developed, strategically publishing the technology may be a cost effective way to do so. According to Thompson, defensive publication can be used to lay the groundwork for challenging U.S. patents.3 Hasford notes that the procedure involves submitting a request for the USPTO to re-examine an issued patent that includes citations of the defensive publications. These defensive publications are evidence that your technology was publicly available before a competitor applied for a patent and thus can prevent issuance of a patent, cause the patent to be invalidated, or provide a defense should a competitor sue claiming you are violating their patent.

Even if defensive publications don’t completely invalidate a competitor’s patent, they may invalidate some of the claims. The result is that the scope of the issued patent is narrowed. Defensive applications also can cause loss of a competitor’s foreign rights to patentability or provide support for broad claims in your firm’s related patents in foreign countries.¹

Protecting core patents

Defensive publications can protect your firm’s core patents. In most cases once a patent is issued on an invention, many incremental improvements are possible. Competitors can “surround” your patented technology with their own patents covering incremental improvements that provide an improved product or a means of manufacturing it more economically. One common solution to this problem is to cross-license patents. Your firm gives a competitor a license to practice the core technology in your original patent while you receive a license to practice patented improvements. However, the net result is that a new competitor enters the marketplace.

Hasford notes that defensive publications describing improvements to your firm’s core patent enable your company to practice both the patent and the improvements without licensing the basic patent to others, thereby preventing new competitors from entering the marketplace. To do so, competitors would have to develop completely new technology. On the other hand, if it is your company that has developed completely new technology, Hasford advises that your firm should file a patent application.

Types of defensive publications

Being in the public domain means that patent examiners and others can find descriptions of your technology. These must enable one having ordinary skill in the described technology to practice the invention. Defensive publications include product literature, white papers, and press releases, which may be in hardcopy form or published on your firm’s website.1 Papers published in research journals or trade magazine articles are also in the public domain. So are papers presented at conferences. However, often the only information available to people who did not attend the conference, which would include most, if not all, patent examiners, are brief abstracts. Only the text of the abstract may be relied upon, not the unpublished information in the full presentation. So it is often be advisable to publish a printed version of your paper or post the slides the presenter used on your firm’s website (see below).

Theses placed in a university library can be used as defensive publications if the public has access to them.1 If library access is restricted to students, faculty, and other university staff, the thesis may not be considered sufficiently accessible to the public unless people can purchase copies from UMI (formerly known as University Microfilms International).

U.S. legal criteria require that defensive publications qualify as a “printed publication” under the U.S. patent law. To do so, defensive publications must be “sufficiently accessible” to the public interested in the described technology. This means that interested people could obtain a copy of the defensive publication if they desired. Circulation of the document must be sufficient for these people to do so. However, the company issuing the document is under no legal requirement to make sure that interested parties such as competitor companies actually receive copies of the defensive publication.

Careful timing of defensive publications is essential. Publish too soon and competitors may learn about the strategic direction your company is taking in time to make their own timely entry into the marketplace using your technology or their own. Publish too late and your competitor may have already filed a patent and be in a position to argue to the patent examiner that your publication does not constitute prior art due to its later publication date. By submitting a manuscript to journals and trade magazines, firms lose control of the timing of its publication due to the time required for peer review. In the case of trade journals, the date of its publication may be affected by the magazine’s editorial calendar with publication of certain subjects scheduled for particular months.

Research disclosures

For over 40 years Research Disclosure has provided a rapid-disclosure mechanism for companies and individual inventors wishing to place their research findings in the public domain. Research Disclosure is the only dedicated rapid disclosure journal included in the PCT Minimum Documentation, ensuring its use during search examination by all leading patent offices or national IP authorities around the world.

Statutory invention registration

Statutory invention registration (SIR) is a relatively costly form of public disclosure. It can be used when the USPTO’s office action on a patent application reveals insurmountable difficulties to receiving a patent. The USPTO charges a fee for SIR, currently $400 or $800 dollars, in addition to the patent filing fee paid earlier. The firm waives patent rights.¹ The SIR could also affect the patentability of related inventions in divisional or continuation in part applications as well as foreign patent applications.

Internet solutions

Documents published on the Internet or online databases are considered to be printed publications within the meaning of 35 USC 102(a) and (b) provided that the publication is accessible to persons concerned with the technology the document describes.1,4 When the only published information available from a conference is in the form of brief abstracts, online publication is an effective means of making the information presented in a conference available to the general public in the form of a full paper or the presenter’s slides.

To control the problem of proper timing of public disclosure, some firms now offer rapid Internet publication of defensive publications. For example, the IP.com website publishes electronic versions of research disclosures. These are searchable using Internet search engines. With proper time stamping and notarization of electronic documents, the original publication date of the document can be verified. Having a publication date is very important in deciding what is and isn’t prior art. Anonymous posting of information is allowed and can thwart a competitor’s use of the document for competitive intelligence on your firm’s plans.

RD Electronic is an online database offering 40 years of non-patent prior art published in the journal Research Disclosure .

DISCLOSURE, a site on the STN International electronic databases, is produced by Germany’s FIZ Karlsruhe and provides the full text, including images of technical disclosure records from the defensive publication journal Research Disclosure. The service may also be accessed directly over the Internet at STN on the web.

Other media are also considered to be printed documents. These include microfilm, magnetic disc or tape, and handwritten documents.

References

S. Thompson. “Building the Fence: Strategic Use of Printed Publications.” Paper CHAL 3 presented at the 232nd American Chemical Society National Meeting, San Francisco, CA (Sept. 10-14, 2006).
In re Wyer, 655 F.2nd 221.
S. Thompson. “Monitoring patents, submitting prior art and developing a defensive publication strategy.” Paper No. CHAL 45 presented at the 230th American Chemical Society National Meeting, Washington, DC (August 28 – September 1, 2005).
In re Epstein, 32 F.3d 1559 (1994).