Defensive Publication is a 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?
This option is preferred, as it means that the examiners do the work ahead of the patent being granted.
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 on our Research Disclosure client base revealed that defensive publication is used when:
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.
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.
As we have seen, one of the two factors that mean a patent can be blocked by a publication is if patent examiners find it during their examination process. This would, in most cases, be the preferred method as the examiners block the patent before it is granted. 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.
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.
Cost: The cost is related to the fees themselves, but also the low amount of 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.
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 journal's publication date. This process is normally complete within minutes.
Once complete, 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.
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