Thomas J. Colson
President and CEO
Edited by Stephen Mraz
Intellectual property (IP) has long been a mainstay at companies that turn out the newest and the next "best" products. As a result, the race for innovation has become a mad dash to the patent office. New companies need to make their mark early or risk getting left behind. And established companies must maintain and build upon their current IP portfolios to remain contenders in this innovation race. Defensive publishing lets companies ranging from start-ups to major corporations adroitly manage IP without exhausting valuable time and resources.
By definition, defensive publishing is the practice of placing innovation into the public domain. Although the tactic is not new, when used hand in hand with patents and trade secrets, it lets companies efficiently build and maintain competitive IP portfolios.
Traditionally, patents have dominated companies' IP strategies. But patenting is expensive. Companies spend, on average, $12,000 to $15,000 to file one patent application in the U.S. Filing this same application in key locations throughout the world can cost up to five times that figure. Is it wise for any company, no matter how rich, to invest resources and rely on just patents to protect their innovative ideas? This is where defensive publishing steps in.
Defensive publication protects a company's freedom to use its innovation in its products and services. And most defensive publication tactics are easy to implement. For example, if your company develops and patents an innovation vital to its business, and later develops incremental improvements or new uses of that innovation, those later developments are not protected by the initial patents. Patenting every new improvement or new use could be cost prohibitive. But if your company doesn't patent it, a competitor who independently discovers the incremental improvements or new uses might patent them. This could create far more expensive problems for your company in terms of litigation, downstream product redesign, royalty payments, and lost time to market. So how do you protect your freedom to practice without investing huge dollars in patents?
Trade secrets are one option. However, they are not always a realistic way to protect your freedom to practice in today's business and technological environment. In some instances, trade secrets are more dangerous than protective. Employees are hop-ping from company to company more rapidly than ever before. With the advanced searching and data-mining technologies in the market, competitive intelligence has become more effective than ever. Which leads one to ask: Are my trade secrets really secret? Anyone who has been involved in trade-secret litigation knows that specific actions must be taken to turn company secrets into trade secrets. Managers who think they have trade-secret protection, but don't, are at the greatest risk of having their innovations patented by competitors.
Defensive publishing alleviates some of the risks associated with trade secrets. By breaking trade secrets into actual steps and components, companies can safely publish selected pieces of that trade secret. This successfully blocks competitors' patents without disclosing the trade secret itself.
Defensive publishing offers many individually tailored publication tactics. The most obvious one is to use publishing defensively, protecting already established intellectual property portfolios. Two ways to do this are the noncore publication tactic and the conference proceedings publication tactic.
A business-savvy company understands the need for continuous growth and development. However, no company has unlimited financial resources. Though new innovations are a key to many companies' success, not every innovation will be patentable. Because of the costs, companies need to discriminate in choosing what to patent. Only innovations vital to a company's business strategy warrant such a financial investment. But, if a company decides not to patent an innovation, one of its competitors might. Using noncore publication prevents this by placing noncore innovations in the public domain. This protects the creating company's freedom to practice in noncore areas of business while at the same time letting worldwide patent offices search and find this prior art.
Another seemingly obvious defensive tactic is for a company to publish its conference proceedings. When a company attends a conference and gives a presentation, any innovation discussed may be considered prior art, thus providing the basis for rejecting a competitor's patent application. However, unless patent examiners are present at the conference, they may never know of this prior art. By publishing the conference proceedings, a company ensures that the information is available for search by patent examiners.
Contrary to its name, defensive publishing can also be a valuable offensive business strategy. It's not enough to just maintain your IP portfolio. To be a player in today's business world, companies must aggressively build on their portfolios. Publication tactics can help companies combat the competition.
The Pied Piper tactic, a recent approach in IP protection, involves publishing technical details of a pending patent application. Because pending patent applications are kept confidential while in the patent office (for 18 months, with exceptions), a company would use this strategy hoping other companies adopt the technology before the patent's issue. Once the published technology is adopted by a company and built into its products or services, that company becomes the perfect licensing target when the patent is finally issued.
Another offensive tactic is disseminating misinformation to confuse competitors. Typically publications and patents are an excellent source of competitive intelligence. Competitors can use the information to determine the direction and trends of new products and technology. By publishing noncore technology in the mix with core technology, a company can throw off competitors.
The benefits of publishing information on innovations are evident. So how does a company go about publishing its work?
Companies can take the traditional route of working with journals, both paid and academic. Academic journals are an acceptable option but publication is not guaranteed. Even if the work is accepted, the timeliness of publication is up to the editors' discretion. This means that when working with an academic journal, a company has little control over when the material reaches the public domain if, in fact, it ever does.
Another traditional option is to partner with a select group of paper-based journals designed strictly for defensive publishing. Then publication is guaranteed. But even this has its drawbacks. For one, publication is not immediate. There is a delay between the time an innovation is submitted for publication and when it actually reaches print. What's more, the point of publishing an innovation is to provide meaningful access to the patent examiners. Many journals do not offer searchable electronic indices, so busy patent examiners will probably never see them, essentially defeating the publications' purpose.
The latest option for companies is to publish over the Internet, posting information on the corporate Web site. The assumption is doing so puts the information in the public domain. However, this is not necessarily the case. There are a number of legal requirements as to what actually qualifies as a defensive publication. Generally speaking, most sites don't have the proper safeguards in place that can act as critical references downstream in the event of a trial.
Another consideration when posting on the Internet is accessibility to patent examiners. With a workload that has grown by an estimated 75% since 1992, patent examiners don't have time to search thousands of company Web sites. Realistically speaking, innovations posted on individual corporate Web sites will most likely never be found.
The most recent option is a central Web resource designed solely for defensive publishing. The first site to offer such services is IP.com. With security measures in place to assure document retention and authenticity, IP.com lets companies publish innovations via the Internet at low cost and in a small fraction of the time it takes paper-based sources. In addition to publishing services, the site offers a globally accessible database dedicated to defensive publications that is visible to all patent examiners. A complete overview of defensive publishing tactics is available at www.ip.com.
In this age of research and development, it is the intellectual property portfolio that makes or breaks a company's success. A well-rounded IP strategy can be a company's strongest weapon in these times of patent wars. With the help of the Internet, defensive publishing is becoming a highly recognized and respected alternative to more traditional IP management techniques. Using defensive publishing alongside such practices as patenting and trade secrets helps companies enhance and maintain formidable IP portfolios.