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Which is more effective: a defensive publication or a patent application?

There are several types of intellectual property (IP) defence, some of which could initially seem strange or illogical. This category includes the practice known as “defensive publishing,” but it serves a beneficial function in your IP toolbox.

In some circumstances, choosing a defensive publication over a patent application may be the wisest action. However, you must utilise this IP defence with a certain amount of caution, and the first step in exercising judgement is learning the ins and outs of the tactic.


What is a publication used in defence?


A defensive publication is any public statement that divulges vital information or the operation of an intellectual property asset, usually an invention, process, or system that is patentable.

This publication also referred to as a defensive disclosure, typically contains an abstract, drawings, pictures, claims, descriptions, and any other material that would be present in a patent application for a particular country. Like its more well-known patent cousin, a defensive publication demonstrates enablement. It confirms that the disclosed technology is original, beneficial, and not prominent (or “contains an inventive step” in a European legal context).

A defence publication’s ideal result is to discourage competing businesses and inventors by demonstrating that the invention being on view has already been over. Since the defensive disclosure would result in a comprehensive search of the prior art and patents, examiners would reject someone who submitted a patent application for an identical or comparable design.

A self-printed booklet, a blog post on a website, or a sponsored advertisement in a prominent media outlet qualifies to release a defence publication since there is no formal process in place for doing so. But keep in mind that the key word here is “public.” It would be desirable to disseminate this disclosure to the appropriate audience through a technical or industry journal, an academic publication, or a prior-art publishing service to have substantial weight—especially if it is likely to elicit legal objections.


When does a defensive publication outweigh a patent application in value?


Defensive publishing may be preferable to applying for patent protection in some situations. The most typical scenarios where this might be the following:

  • Probability of high costs: Filing, obtaining, and maintaining a patent grant can be expensive, especially when paying for regular patent renewals in several jurisdictions. Disclosure may be a good option if these expenses significantly outweigh the advantages of full-fledged patent protection.
  • Industries that change quickly: Products in the fast-evolving technological sectors, particularly consumer electronics, are frequently rendered outdated within a short period. There are many more situations in which patenting would be financially inefficient, even if some components in this industry, like battery or chip technology, may have long shelf lives that would profit from patent rights.
  • Intense rivalry: If you are aware that one of your competitors is working on an invention that is identical to or strikingly similar to yours, technical disclosure of your IP could seriously undermine their strategy. In this case, a potent offence is the best kind of defence.

In each situation, a defensive publication gives the IP access to the general public. Even partial disclosure of the invention makes the invention prior art, making it very challenging for a patent examiner to approve any meaningful claims that include the published information. Therefore, a defensive publication can protect your right to work while cutting down on filing, prosecution, and maintenance costs.

Drawbacks of defensive publications

Taking the defensive publication path is only sometimes a good idea and may even backfire. Finally, defensive publishing allows anyone to take your intellectual property and utilise it. 

Defensive publishing also counts against all upcoming submissions because it renders the pertinent material identical to the prior art and prevents it from receiving any meaningful patent protection. That implies that it will influence your filings similarly to your rivals. There are a few localised, limited exceptions to this rule. For instance:

. It may include an inventor’s prior art in utility or design patent applications filed in the US with filing dates one year after the disclosure. Otherwise, Title 35 Section 102(a)(1) restrictions are in effect.

  • A comparable one-year grace period is provided by Japanese Patent Law (JPL) Article 30(2) following the defensive publication, when a patent application, including prior art, can still be filed.
  • The European Patent Convention (EPC) stipulates that a patent applicant may file within six months of exposure. Due to some wrongdoing (“evident abuse”) or “an official, or officially recognised international exhibition.” EPO will disregard public disclosure. (These trade shows are usually for the sciences or industries.)

Last but not least, any ambiguity in a defensive publication (such as casual or evasive wording that may confuse one) reduces the effectiveness of the document. Clarity must be maintained while maintaining precision, which means avoiding providing overly specific information.

Developing a complex IP strategy

A sound IP management/protection plan must be prepared to use all available tools when necessary and cannot be rigid or myopic. Your long-term innovation ambitions depend on you knowing when to publish defensively and when to pursue a standard patent.

The choice to use a defensive publication programme or a similar disclosure technique should be made with time and must consider several factors. These factors include, but are not limited to, market value, the state of the industry, the potential to increase (or decrease) competitive advantage, and the impact that filing or disclosing would have on your current and future IP.

By preventing competitors from entering a market before you do, published technical disclosures, combined with patents, can boost an IP portfolio. For more information about these strategies and how to incorporate them into your company plan, contact IP Docketers today. 


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