Defensive Publication: An Alternate Way of Maintaining Your Turf in a Competitive Marketplace

03 April 2014 Privacy, Cybersecurity & Technology Law Perspectives Blog

It is common knowledge that the bread-and-butter of emerging startups lies in securing exclusive rights to key aspects of their implicated technology. Staking claims to valuable IP assets via direct ownership or exclusive licensing remains a huge priority, especially in light of the America Invents Act’s First Inventor to File regime. The flipside to maintaining your edge in a hypercompetitive market, however, is to prevent competitors from encroaching into your commercial space with their non-infringing substitute technologies. An effective way to accomplish this is by stifling competitor attempts to expand their own IP portfolio via defensive publications.

What are defensive publications?

A defensive disclosure is an IP strategy that preempts other parties from obtaining a patent on a product, device or method. The strategy involves providing fairly comprehensive descriptions of the product, device or method so that it enters the public domain and becomes prior art. Therefore, defensive publication of otherwise patentable information can prevent others from later staking a claim to the cutting-edge technology by either destroying the novelty of the competitor’s invention or rendering it obvious.

Many companies use defensive publications to preempt competitors from growing and/or fully leveraging their own IP. Defensive publishing is especially relevant for players in hypercompetitive areas such as nanotechnology or biopharmaceuticals, where even marginal competitor growth can lead to significant losses in revenue. IBM, for example, frequently uses the IBM Technical Disclosure Bulletin to advance the state of the art, thereby raising the bar for its competitor’s patent applications. In other words, IBM’s aggressive practice of defensive publication forces its competitors to narrow the scope of their patent rights, thereby reducing the likelihood of competitors encroaching into IBM’s innovative space. Moreover, the cost of using defensive publications as an IP management strategy is quite low compared to the costs associated with securing patent rights.

When is defensive publication an optimal strategy?

When considering a defensive publication strategy, one must be cognizant of the fact that defensive publication acts as a double-edged sword, i.e., it can be used as a weapon against you as well as against your competitors. In most foreign jurisdictions, publication by the inventor immediately extinguishes patent rights including those of the inventor. A decision to publish thus equates with a decision to irreversibly relinquish potential patent rights and could possibly damage your IP status in the long-term. Thus, it is paramount that the decision to use defensive publication be made in the context of a comprehensive IP strategy.

In light of the above caveats, defensive publication should be considered when (i) the cost of patenting outweighs the benefit of the patent monopoly and (ii) public disclosure preempts competitors from patenting possible iterations of a major advancement in a given technology space.

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