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Defensive Use of Publications in an Intellectual Property Strategy
Bill Barrett

Bill Barrett is an intellectual property consultant at ipCapital Group, 400 Cornerstone Drive, Suite 325, Williston, VT 05495 e-mail: bbarrett@ipcapitalgroup.com.

Although it has been slow to catch on in biotechnology, defensive publication can be an important part of your comprehensive IP strategy.

A search of the US Patent database from 1996 to 2001 reveals almost 10,000 patents that cite the IBM Technical Disclosure Bulletin as prior art1 <http://www.nature.com/bioent/2003/030101/full/nbt0202-191.html#B1> . The Bulletin, which is published as a component of Research Disclosure, is a mechanism for defensive publishing. Citation of a publication, such as the Bulletin, in a patent application indicates that the publication contributes to the state of the art against which the application is judged. IBM uses the Bulletin to advance the state of the art, thereby raising the bar for its competitors' patent applications. In other words, Bulletin publications force IBM's competitors to narrow their patent claims, helping IBM to reduce the possibility that its competitors' patent claims will encompass IBM inventions.

Citation of such a large number of Bulletin articles strongly suggests that IBM's defensive publication strategy is paying off. Despite its successful use by IBM and a handful of other companies, defensive publication has been slow to catch on as an intellectual property (IP) strategy in biotechnology. This article discusses the legal implications of defensive publications, analyzes strategic considerations for determining whether to publish, patent, or maintain an invention as a trade secret, discusses legal considerations for the preparation of defensive publications, and discusses forums for defensive publication.

What are defensive publications?

The heart of the patent system is a balanced deal between the government (representing the public) and the patent applicant, and an understanding of this deal sets the context for a discussion of defensive publication. The deal requires the inventor to disclose a new invention to the public. In exchange, the government grants the inventor a temporary monopoly on his or her new invention. The purpose of a defensive publication is to destroy the balance of the deal by disclosing an invention to the public. If the defensive publication predates the filing of the inventor's patent application, the patent deal for that application is out of balance: the patent applicant has nothing new to disclose to the public, because the invention has already been disclosed and is thus already possessed by the public. Technically speaking, the successful defensive publication renders the competitor's invention obvious or lacking in novelty.

There is a caveat to the general principle that defensive publications destroy patent rights. In the United States, a competitor may overcome a defensive publication by presenting evidence showing a date of conception that precedes the date of the defensive publication. However, this opportunity is not available in most foreign jurisdictions. As a result, defensive publications have their most predictable effect in the destruction of non-US patent rights.

When is publication a desirable strategy?

When considering a defensive publication strategy, keep in mind that your defensive publication can be used against you as well as against your competitors. In the United States, when an inventor publishes his or her invention, a one-year grace period ensures that the inventor's patent rights are not immediately extinguished. Publication immediately extinguishes most non-US patent rights, however, even those of the inventor. A decision to publish is thus a decision to irreversibly surrender potential patent rights. Such an important decision should only be made in the context of a comprehensive IP strategy. Viewing the potential impact of your defensive publications in light of a high-level strategy will reduce the possibility of strategic mistakes that could damage your IP position.

In general, publication should be considered when (i) the cost of patenting outweighs the benefit of the patent monopoly and (ii) the invention cannot be protected in a manner that is sufficiently secure to support trade-secret protection. The flow chart shown in Figure 1 <http://www.nature.com/bioent/2003/030101/full/nbt0202-191.html#f1>  provides a useful framework for determining the disposition of any specific invention.

Figure 1: Flow chart showing the process for deciding whether an invention will be kept as a trade secret, patented, or made the subject of a defensive publication. <http://www.nature.com/bioent/2003/030101/fig_tab/nbt0202-191_F1.html>