Defensive Publication – The Best Defense is a Good Offense
The best defense is a good offense! This sounds quite belligerent, and indeed, this article is all about strategies developed to “fight” opponents. However, this does not happen on the battlefield but in an economic environment where companies have to assert their competitive edge and maintain a strong foothold in the international markets. How can a company best protect its valuable asset, its intellectual property, and fend off competitors?
There are manifold strategies to sustainably protect a company’s inventions. Besides the traditional method of applying for a patent, which grants the applicant an exclusive, temporary marketing right in exchange for publishing the invention, there are also strategies the purpose of which is not clear at first sight, one of them being the strategy of defensive publication. But what exactly is a defensive publication?
Briefly speaking, the inventor leaves his cover (the in-house R&D department) and presents his idea – a typical case of “seeking refuge in attack”. And although the invention is disclosed, this is a short and effective way of protecting inventions from being patented by someone else.
What exactly does an inventing company have to do?
Instead of applying for a patent, companies submit their description of the invention to a public domain where it is released. There are certain publishing houses and databases specializing in defensive publications.
By publishing the invention it becomes prior art and its novelty is established worldwide. From now on other companies and competitors cannot obtain a patent on the same invention because the principle of novelty is no longer achieved. If the described technical aspect has not been patented before, it grants the original inventor and all other interested parties permanent free usage of the invention.
When do companies use the strategy of defensive publication and what are its advantages?
First of all it is cheap. There are no administrative fees which otherwise would occur for a) filing for patent protection at a patent office, b) nominating a patent attorney, and c) translating the text of a patent document. It is a fast method because companies simply have to send the description of their invention to a public domain where it is published. There are no further examinations of the invention.
If an innovation is expected to not reach a specific profit margin or does not belong to the company’s core business, it might be considered to defensively publish it. In fast developing markets time is one of the most important factors in competition, so companies take the strategy of defensive publication because it is extremely time-saving compared to a patent procedure.
Another advantage: It is anonymous. Companies do not have to disclose their name when publishing their invention; it is their free choice to do so. Competitors have difficulties in tracking anonymously published inventions and finding out the company name behind it.
Bad Chances for "Patent Trolls"
The strategy also provides protection against “patent trolling“, which has become common practice. “Patent trolls” are companies or individuals who do not have a patented product of their own on the market, but buy patents from third parties (e. g., from bankrupt companies) in order to assert the related claims vis-à-vis potential infringers.
The aim is to obtain license fees by suing companies using this patent or certain claims derived from it. Defensive publications prevent this because no patent can be obtained from them.
Defensive Publications – An Important Source for All Prior-Art Searches
By disclosing inventions, defensive publications contribute to the state of the art. Just like patents, journal articles, dissertations or scientific books, they show the ongoing technical progress. This makes them an important source for all prior-art searches, which are the core of the patent business and always need to be conducted before filing a patent application.
It depends on the results of prior-art searches whether a patent can be filed for an invention, or if the claims have to be changed. In the worst case, an innovation has to be discontinued because it has already been disclosed by someone else and therefore is no longer a novelty.
STN International Offers Access to Defensive Publications
STN realized a long time ago that defensive publications are an important part of patent searches and therefore offers access to many defensive publications. From a technical point of view, defensive publications are considered a type of patent documents and are therefore compatible with documents from STN patent databases.
The world’s largest independent defensive publication database is RDISCLOSURE on STN. It contains exclusively defensive publications from the journal RDISCLOSURE, from 1960 to the present, and more than 42,000 full-text documents including images. It is updated monthly. But also other large STN databases such as CAplusSM and DWPISM contain defensive publications. Examples are available at:
While defensive publications are certainly not the main strategy used to protect a company’s intellectual property, they still are, in certain situations, an effective way to profitably market innovations without a patent.
This shows that IP professionals like patent attorneys and patent departments can be quite creative and develop unconventional but efficient strategies to maintain a company’s competitive edge in the global markets.