Defensive Publication as an Intellectual Property Protection Method

Salomon Kisters

Nov 2, 2020

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The management of intellectual property has become an essential process for almost every business. IP protection has never been as important as today. This article will focus on a specific intellectual protection method called “defensive publication”, and analyze the application of defensive publications as an element of an effective IP protection strategy.

Intellectual property - a definition

Intellectual property (IP) can be defined as a class of property which includes various aspects of human intellect, including all results of human creativity and intellectual activity. The core word that distinguishes intellectual property from other categories of property is “intangible” - in essence, it means that IP is indivisible, so that an unlimited number of people can use an intellectual property without it being depleted. This drastically differentiates intellectual property from tangible property classes such as lands or goods, opens up new possibilities, and creates new vulnerabilities.

History of intellectual property

Although early legal precursors for the idea of intellectual property could be tracked to antiquity, the modern concept of IP was only introduced between the 17th and 18th century, and wasn’t in common use until the 1800s. The industrial revolution put technologic advances at the forefront of economic development, and by the 20th century legal notions of intellectual property became a standard in most jurisdictions around the world.

In the 21st century, intellectual property is more important than ever. Within a globalized and digitized economy, innovation is the most crucial factor of economic success. The concept of intellectual property has evolved and expanded to include various IP types such as trademarks, copyrights, patents and trade secrets. Governments around the world compete to provide businesses with high quality of legal intellectual property protection to assure an optimal climate of competitiveness and economic progress.

What is a defensive publication?

As with other methods of intellectual protection, the goal of a defensive publication - also referred to as defensive disclosure - is to protect intellectual property by preventing a third party from obtaining a patent on a result of intellectual activity, such as a product, design, technology or method. In essence, a defensive publication denotes a partial disclosure of an intellectual property into the public domain. In case of a product or a design, a drawing might be disclosed. In case of a technology or method, a description may be released into the public. A combination of a drawing and a description might be used as well.

The purpose of disclosing an invention to the public domain is making sure that it gets the legal status of prior art. Prior art (sometimes referred to as state of the art or background art) is a legal term defined as the total sum of all publicly available information that could be relevant to the originality of a patent claim. If an intellectual property described in a patent application was previously outlined in prior art, or could be deduced from prior art, the patent application cannot be approved as valid as it doesn’t meet the legal standards of originality.

In short, defensive publication is a strategy aimed to prevent third parties from filing a patent application for an intellectual property. By releasing a certain amount of patentable information into the public domain, the actual inventor of a product, design, technology or method can make sure that nobody can appropriate the invention through gaining hold of the patent rights.

Why use defensive publishing?

To understand the purpose of defensive publishing, differences between a defensive publication and a patent need to be understood, since patents are commonly considered the go-to method of intellectual protection for products, designs, methods and technologies. For a person who never had to apply for a patent, acquiring patent rights might seem like a formality. After all, a common notion known from the media and history is the image of an inventor who makes a scientific breakthrough, and assures his rights by patenting the invention. In the modern day, nothing could be further from truth.

In reality, filing a patent application is not only a very complicated, but above all, a very costly process. It’s hard to give precise numbers concerning the costs of patenting, because the number varies depending on the industry, complexity of the intellectual property, and the size of an entity filing for a patent. Most legal systems provide cost reductions for smaller companies, as well as for those who have not applied for a patent before. Naturally, patenting costs also differ between countries - and since patenting is a localized process, applying for patents in different countries brings extra costs.

On average, according to data based on multiple surveys in many different industries, acquiring a patent in the United States costs between $5,000 and $15,000 depending on the aforementioned factors, with complexity of the invention being the primary influence on the total cost of a patent. However, it’s important to remember that the initial fees involved in acquiring a patent are only a fraction of the total cost required for effectively securing patent rights over a period of time.

In the US, after a patent is issued, keeping it in force for a period of 20 years requires payments of three additional fees called maintenance fees, which must be paid 3.5, 7.5 and 11 years after the patent is initially acquired. In many countries other than the United States, keeping a patent in force requires the maintenance fees to be paid every year. Additionally, some countries even require paying maintenance fees for the period between the filing of a patent application and the issuing of a patent. When we count not only the official fees required for applying for a patent, but the total sum of all costs involved in properly preparing, applying for and maintaining a patent for a long period of time in more than one country, the total monetary investment can easily exceed $200,000 .

In practice, high costs of patenting mean that only the largest, multinational corporations can afford using patents as their primary, or one of the primary intellectual protection strategies. Medium and small businesses, as well as individuals inventors, are forced by necessity to only use patents very selectively, and vary their intellectual protection policy with diversified tools and strategies of securing intellectual property rights. That’s when defensive publications become extremely useful.

Advantages of a defensive publication

1. Saving costs
2. Saving time

The main advantage of defensive publishing, and the reason why many companies decide to use it instead of patenting, is of course its low cost. Even for companies who can afford paying for acquiring and maintaining patents, using defensive publications can be a great way to cut costs, since not every intellectual property necessarily requires a patent, and in many cases a defensive publication is more than enough. The tech industry giant IBM for example has been routinely using defensive publishing to secure its intellectual property rights for over 60 years.

Saving Costs

Compared to patenting, the costs of defensive publishing are negligible. In the cheapest possible option, creating a defensive publication can even be free of any monetary cost, as in the case of self-publishing a defensive publication. However this method is far from optimal, and choosing the use of a specialized defensive publishing service is a much better choice. The cost of using a dedicated defensive publishing platform is still an extremely small fraction of the total cost of acquiring and maintaining a patent, and provides an excellent grade of intellectual property protection.

Saving time

Low cost is the primary benefit of choosing defensive publishing as the method of securing intellectual property, however it is not the only one. Another advantage provided by defensive publications is time: even for a wealthy business who could afford the financial cost of patenting, preparing and filing patents would take a lot of time, and in case of larger companies that create a lot of new intellectual properties, keeping track of the progress of all the application processes would turn into a bureaucratic nightmare. Defensive publishing is much easier and takes much less time, as the necessity of dealing with a government bureaucracy is completely avoided.

Core components of a defensive publication

Although the core idea behind defensive publishing is quite simple, and the processes involved in creating and making known a defensive publication are much more straightforward than complicated and demanding specifications of acquiring and maintaining a patent, there are still some standards that need to be met. Fulfilling these unofficial formal requirements can optimize the entire process of defensive publishing, and guarantees that it remains an effective strategy of intellectual property protection.

1. Precision and Conciseness are key
2. Enablement requirement
3. Include possible applications
4. Include alternatives of an invention
5. How to achieve a legally binding prior art
6. The form of publication matters!
7. Advantages of using defensive publishing platforms

Precision and Conciseness are key

The first and most fundamental thing to remember is that a proper defensive publication should be as concise as possible. Informal, vague language that could be potentially misinterpreted or twisted can render a defensive publication ineffective. A particular focus should be given to making sure that the language used in the defensive publication is maximally clear and precise.

Enablement requirement

One of the most common mistakes in preparing a defensive publication is not meeting the legal standard known as “enablement requirement”. In order to constitute a prior art, and thus stop a third party from patenting an intellectual property, the defensive publishing must contain enough details about the invention to enable a skilled professional in the respective field to anticipate and recreate the subject of a publication. For example, in case of a chemical compound, for the document to constitute a prior art, it should include all information necessary to enable a chemist to produce the compound in question.

Include possible applications

Another thing that is extremely important to remember, especially when it comes to more complex intellectual properties, is the fact that for a defensive publication to be effective, it should cover not only the invention, but also all its possible application. In the example case of a chemical compound, if the defensive publication only described the compound itself, a third party could easily get hold of the invention by patenting a specific application of it. For example, in case of a pharmaceutical compound, someone could patent the use of our compound in medicating a certain symptom. To prevent such occurrences, it is crucial to make sure that the defensive publication describes not only the invention, but also its possible applications.

Include alternatives of an invention

Related to the need to describe all the potential applications of an invention is the fact that potential alternatives should also be covered. Continuing with the example of a chemical compound, if a compound and a method of its synthesis is described in a defensive publication, a third party could deduce and patent an alternative method of producing the same compound. To effectively secure intellectual property through a defensive publication, it’s essential to think ahead about all the potential applications and alternatives of an invention.

How to achieve a legally binding prior art

In order to make sure that a defensive publication is an effective means of securing intellectual property by constituting a legally-binding prior art, aside from the technical formalities required from the document itself, a proper method of publishing is needed. Simply posting details of an invention somewhere on the Internet is not a valid intellectual protection strategy, which is why dedicated platforms for defensive publishing were developed.

The form of publication matters!

Although posting something on the Internet may seem like a genuine method of placing it into the public domain, using an unprofessional medium to do so might prove itself problematic, and create a way for a third party to get around the defensive publication to secure patent rights for an invention anyway. Making something public and available to find with search engines is often not enough, as for something to become a prior art, an independent, verifiable timestamp of the exact moment of publishing needs to be provided.

The reason why using a defensive publishing service is required in order to be fully sure that a defensive publication will be a valid tool of IP protection is the fact that aside from the document itself, its notarization as well as an undisputed, precise, verifiable time and date of publishing is necessary. Posting a defensive publication on a personal blog, a company website or on an Internet forum might not be sufficient, and could render the whole process of defensive publishing ineffective .

Advantages of using defensive publishing platforms

The greatest benefit of using a specialized defensive publishing platform is procuring auditable, verifiable and untamperable time stamping. Posting a time-stamped defensive publication provides an undeniable proof of the exact moment when an invention was made public, so that nobody can undermine its status as a prior art. Furthermore, websites specialized in defensive publishing make sure that a publication is easy to look up with search engines.

The most cutting-edge development within defensive publishing is using blockchain technology to assure full notarization and maximum quality of using defensive publications to secure intellectual protection.

Companies such as OriginStamp utilize blockchain to publish documents with tamper-proof timestamps. The specifications of blockchain technology make it very useful for providing an untamperable certificate of origin for any data. In case of using decentralized ledgers for defensive publishing, OriginStamp anchors a cryptographic fingerprint of the document to multiple public blockchains. This provides an undeniable, independent proof that an intellectual property entered the public domain at a specific time.

Conclusion

In a highly competitive, modern economy, technological innovation is often the key to success. A deliberate and thoughtful strategy of intellectual property protection is crucial to make sure that a third party does not hijack the rights to an outcome of creative and intellectual activity within a company. However, due to the very high cost of applying for and maintaining patents, businesses turn to other, more cost-effective methods of intellectual property protection, such as defensive publishing.

Self-publishing a defensive publication is free, but can be risky since it doesn’t provide a guarantee that the publication will really fulfill its intended goal of preventing a third party from acquiring patent rights. Neither Internet forums, personal blogs or company websites provide legally binding timestamps, since the content of webpages like these could be changed after the initial publication. Choosing to use a specialized defensive publishing service is always preferred to self-publishing. Compared to the total cost of preparing, acquiring and maintaining a patent, paying for the services of a dedicated defensive publishing platform is still extremely cheap, while it can perfectly fulfill all the requirements of a solid, bullet-proof IP protection method.

New technological developments, and specifically the solutions utilizing decentralized public ledgers, have greatly improved the process of securing intellectual property with defensive publishing. Blockchain not only provides an independently verifiable and fully transparent timestamp for a defensive publication, it also makes the whole process much more simple, fast and cost-effective. Defensive publications put in the public domain with the help of a dedicated defensive publishing platform that utilizes blockchain technology provide untamperable timestamping, and can be considered an excellent choice of an intellectual property protection strategy and a valuable alternative to patenting.

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