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For companies in the manufacturing and engineering industries, including software, the value and importance of a robust and growing patent portfolio is well understood. Patents can protect intellectual property and preserve a company’s ability to build and develop on an idea, such as a product, method or machine. This protection is valuable for protecting a company’s competitive edge. In addition, patents have value as assets themselves, and can be bought, sold and traded like other assets. For many inventors and small companies, obtaining a patent is an important goal.

For the layperson not familiar with patent law and the strategies surrounding intellectual property (IP) protection, patents are a familiar concept. Everyone who has watched an episode of Shark Tank understands that patents have value—as we see the investor’s eyebrows shoot up as soon as the word is mentioned. However, there is a fascinating strategy that is not as well-known as a patent, but which in many cases is equally effective. This strategy is publication. We spoke with Josh Volpe from IP.com to learn more.

Patent vs Publication: Similarities and Differences

Intrinsic to all intellectual property protection available in the U.S. and around the world, including trademark, copyright and patent, is the concept of rewarding the first person or company to develop a new, original idea and protecting that person or company from plagiarism. Ideally, IP protection law is meant to encourage and foster innovation and creativity. However, in practice, IP protection can work against innovation and creativity. For example, a powerful brand could use trademark law to force a smaller player to make changes to its branding, or a powerful record label could bring legal action against a smaller musician whose music may infringe on an existing song. In the world of patents, competing companies can use patents to force or control their competitors’ use of technology or inventions and designs.

Less legitimate is the infamous “patent troll,” a person or organization which is not productive in and of itself but abuses the patent law system to win court judgements for profit; essentially a form of extortion. Using patents strategically to compete in the market is not necessarily so malicious. What should you do to protect your IP? As the saying goes, the best defense is a good offense. Or is it the reverse?

The High Costs of Patenting

Consider a computer hardware company which develops a new, completely original input device. The company files a U.S. patent, with the complete process costing thousands of dollars. However, the journey of protecting this new product doesn’t end there. The company works in international markets, so patents must also be filed in other jurisdictions. On top of that, as the company continues to innovate and develop the product, do they continue to file patent after patent protecting every unique feature and utility of the product? Before long, the company faces a skyrocketing intellectual property cost, which can easily reach millions of dollars.

In addition to these costs, problems can come from the competition. Now that the company’s revolutionary input device is patented, it has become public knowledge. Without adequate protection, a competitor could file an adjacent patent for an improvement or new feature, and now an entire avenue of development is closed to the original company.

One solution for this company could include defensive publishing.

What is Defensive Publishing?

In simple terms, defensive publishing uses publication to block approval of competing patents. This works because patents only protect original ideas. If patent office examiners review a patent which is based on ideas that exist in the prior art, the patent will not be approvable. In the event that a patent is granted anyway, publications can be used to win litigation and successfully claim that the patent is invalid. So, while publishing an invention does not grant the exclusive right to exploit an idea, it does prevent competitors or other actors from patenting it. Publication is also much less expensive than patenting.

Defensive publication is also used when the idea would be difficult to patent, or when the patent would not be profitable.

Build a Picket Fence

In our example case, our hardware company could patent the original design for the input device, then as development continues, use defensive publishing to disclose new features and innovations on it. This would effectively prevent competitors from filing adjacent patents and keep our company free to continue developing the product. This is what is known as the “picket fence” strategy.

Methods of Publishing Inventions to Prior Art

You might be familiar with an old technique of mailing yourself a sealed envelope containing a manuscript. Because the envelope remains sealed, dated and stamped by the post office, it can serve as proof that the content of the manuscript is original. For the author of that manuscript, this can serve as a rudimentary form of copyright protection and can be used as evidence in court.

However, this technique cannot be used for defensive publishing of a patentable idea. It is not enough to prove who first invented an idea. What matters is whether opponents will be able to patent the idea. To prevent this, publication must make the idea available to the public. In academia and the sciences, one common route to publication is through a journal. Disclosures can also be published to a patent office. In the USA, the patent office can take 14 weeks to complete this process, which runs the risk of patents sneaking through. Another option is to publish via a defensive publishing service, such as IP.com. These services maintain public prior art databases, which can be easily searched by members of the public—and importantly, by patent application examiners around the world. Using a digital service such as IP.com to publish disclosures reduces that risk period from weeks to minutes.

Improving Disclosures with IP.com

Once the decision has been made to defensively publish rather than pursue the patent process, the disclosure of the invention to publication is not trivial. Disclosures are carefully crafted descriptions of inventions. In patent law, the specific wording of disclosure documents can mean the difference between protection and no protection. In addition, just as with a patent application, it is important to ensure the disclosure describes the idea specifically and completely.

Typically, prior art research aids this process to guide the inventor away from existing prior art and ensure the language is correct and precise. Conventionally, this can be a long and tedious process. IP.com has developed (and patented) a semantic search engine called InnovationQ which indexes and retrieves prior art and patent literature from a large database connected to the USPTO and patent offices around the globe. In addition. IP.com offers AI-enabled analytics tools that can assess your disclosures as you write them, providing resources and guidance at your fingertips.

Whether the goal is to ensure freedom to operate or avoid costly patent litigation, defensive publishing is a strategy to consider when developing new innovations. IP.com can provide a toolbox of powerful resources to help along the way.

To learn more, visit IP.com.