Defensive Publication

OPERATIONAL EXCELLENCE SERVICES

Research disclosure is a fast and effective method for protecting your inventions

Companies that publish with us know that they can rely on their disclosures being found by the patent authorities

Defensive Publication is method to establish prior art by publishing details of an invention into the public domain, with the purpose to stop others obtaining a patent on the same invention. The end goal is to ensure the right to practice the published invention. Studies have revealed that up to two thirds of patenting organisations are using this method actively within their IP strategy.

The perhaps most effective channel to make an invention public is Research Disclosure, the industry standard defensive publication service, launched in 1960 and operated by Questel Ireland.

How can defensive publication block patents?

Put simply, defensive publications can be used to block subsequent patents at two points:

1. By examiners during the examination process

This option is preferred as it means that the examiners do the work ahead of the patent being granted.

2. Through opposition or invalidity proceedings

Option 2) although important may be more costly especially in the event of litigation.

Why do organisations use defensive publication?

To understand why an organisation would use defensive publication we can look at the other main alternatives used to protect inventions – patent and trade secrets. How can defensive publication be used in relation to those?

While patents are powerful tools, they can be expensive, and a defensive publication may be more economical. The decision between patent and publication would be a trade-off between business aspects (is patenting desirable?) and legal aspects (is patenting possible?). A survey carried out by Questel on their Research Disclosure client base revealed that that defensive publication is used when:

The invention would be difficult to patent
The invention relates to a product which is already well protected
A patent would not be profitable

Another study highlights the risks with trade secrets, and has indicated that defensive publication is preferred over trade secrets if the importance of maintaining freedom to operate is critical. This is especially the case when the risk is high that a competitor re-invents and patents the invention.

Where can you publish?

Although clearly any document made available to the public will be defined as prior art, not all channels are as effective for defensive publication. Questel clients have responded that the main considerations to select a channel for defensive publication are: Reliability in court, Accessibility to patent examiners, option to publish anonymously, cost and the speed of the process.

Reliability in court

Research Disclosure is recognised globally by the courts as an independent source of evidence of publication, sharply reducing the costs of objection proceedings. Our system of publishing in full both in print and online meets court standards of proof around the world

Accessibility to patent examiners

As we have seen one of the two options that a patent can be blocked by a publication is that patent examiners finds it during their examination process. This would in most cases be the preferred method as the examiners take care of blocking the patent before it is granted. Obviously, this relies on examiners having access to and searching the source where the disclosure is published. Research Disclosure is searched by major patent offices and has PCT Minimum Documentation status.

Anonymous publication

An anonymous publication option is offered by Research Disclosure, so that an article can be published without disclosing neither the inventor nor the publishing organisation. In most circumstances this is preferable: it creates the same patent blocking prior art whilst making it is considerably harder for competition to identify the publication.

The aspect of cost is related to the fees themselves but also the low amount specialist time needed, and the ease of the publication process.

Speed with a service like Research Disclosure you can get the disclosure published immediately with a legally trusted publication date.

How can you publish with Research Disclosure?

The Research Disclosure publication process is simple

An article is uploaded using an online submission form. Once approved we date stamp, make available for online searching and notify you of the paper journals publication date. This process normally finished within minutes.

Once done your publication:

Will instantly be available for online searching and can be accessed by patent examiners, who are also required to search the database for examination of PCT applications.

Will be published in full in the monthly Research Disclosure Journal for additional legal reliability.

The anonymous option in Research Disclosure makes harder for competition to identify an locate the publication

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