Defensive Publications - a Free Picket Fence
Updated: May 5, 2021
What does a defensive publication do? It creates prior art. Blocking others from obtaining patents on aspects of your innovation.
To be clear, a defensive publication will not provide you with a legal asset that can commercialized. It will not grant you a monopoly. But it will block others from getting such monopolies. It levels the playing field. Most important, it is free. There is no better ROI.
So how is the strategy implemented?
The idea is to combine patents with defensive publications.
Assuming you have developed a new technology and are introducing a new product. Early on in the development cycle, you protect your innovation with a patent protecting the core innovation. Yet, as your innovation becomes public,
others, including competitors, might identify features and improvements to your technology. Further, they may file improvement patents claiming these new features. In other words, your competitors patents may block your technology. Preventing you from expanding your product portfolio.
To lessen this risk, you can publish attributes of your technology that you identified after filing the patent. For example, before product introduction, conduct a brain storming session. Form a list of all ideas for improvements, extra features and alternatives etc. Segment the list into two categories:
ideas that may be future improvements leading to patent protection
ideas that are not on the technology development path
Note that ideas for category one - require a decision and a potential outlay of financial resources. It must be after careful consideration. Ideas that do not get into list one - should be on the second list. The second list - all the ideas discussed , that will not be patented , but will be published. There are drawback to having many defensive publications published at different times.
There are many venues in which defensive publications can be published. A review of these venues parallels a review of what forms prior art. The choice of venue depends on the IP portfolio goals and strategies. For example, publishing in a database included in the patent office search procedures, increase the chance that an improvement patent, will not be granted. Another option is to publish the data in a venue, such as a trade magazine, or web site. It is less likely that a patent examiner will find this publication, so it will not be used in the examination process of the improvement patent. Yet, should the business need arise, this defensive publication cana competitor’s blocking patent.
In summary, free defensive publications can be used to create a defensive IP picket fence. Used wisely, you can’t beat the ROI.