Quote from Martin Schweiger on October 30, 2021, 11:53 pm

this was published by Kurt Sutter:

https://www.linkedin.com/pulse/defensive-publications-kurt-sutter/

Defensive Publications

“We’ve had this great, new idea,” the CTO says, grinning proudly. “We want to use it in next year’s version of our product.”

The CEO raises an inquisitive eyebrow. “Should we patent it?”

“Naw,” the CTO replies. “It’s not that important.”

“A pity,” the CEO says. “But then, at least publish it so no one else can patent it. Make a defensive publication on the internet.”

Defensive publications?

So, what’s the story behind defensive publications on the internet?

Do they make sense? And, if yes, how to go about it?

What are defensive publications?

Defensive publications are public descriptions of ideas with the purpose of making these ideas... public. Once an idea is public, it cannot be patented anymore.

Hence, in the story above, the CEO is right (isn’t s/he always 😉?). If a third party tries to patent the published idea after the defensive publication, the patent will be invalid.

As with all things, there are pros and cons to defensive publications.

Pros:

• Defensive publications make it more difficult for others to obtain patents (or design patents) for the same ideas.
• In most cases, they are cheaper and quicker than a patent application.
• They may be less visible to your competitor than a patent application.

Cons:

• Once published, you cannot patent the idea anymore (in most countries).
• Others can copy the idea.

Hiding a defensive publication?

As mentioned, defensive publications are often less visible (harder to find) than regular IP. Your competitors may monitor your patent applications, but they will probably not monitor your defensive publications. You don’t even have to publish them under your company name (they can be posted anonymously).

Often, companies try to “hide” their defensive publications by publishing them on a rarely visited website and making them hard to find. For example, they render them invisible to the big search engines or they post documents without searchable text.

Be careful there.

Most jurisdictions require documents to be sufficiently “discoverable” to become valid “state of the art”, i.e. in order to render their contents non-patentable.

For example, and as noted in decision T 1553/06, the Boards of Appeal of the European Patent Office have formulated two conditions:

1. The document can be found by a public web search engine by using one or more keywords, all related to the essence of the content of that document.
2. The document remains accessible at its URL for a time long enough for a member of the public to have direct and unambiguous access to the document.

If both the conditions are fulfilled, the document is considered to have been available to the public.

Those tempted to “hide” their publication should beware of the first condition. A document must be retrievable by relevant search terms on a “public web search engine”.

Some prior art databases hide their contents from Google, Bing, etc, only allowing access through their own search tools, which may even be hidden behind a paywall. Does this kind of tool qualify as a “public web search engine?” I doubt it. In particular if the database is a small one, the expected cost-benefit ratio makes it extremely unlikely that a skilled person would use such tools and retrieve the document. And this is precisely a factor to be considered when assessing the public availability of a disclosure (see e.g. decision T 0461/88 of the Boards of Appeal of the EPO).

Thus, if a document is hidden in the sense that it is very hard to find or not retrievable using relevant keywords, it may not form prior art.

Caveats

Apart from the temptation to hide the publication too much, here are two other common pitfalls in defensive publishing.

1. It’s all about proof

You must be able to prove that your defensive publication has been available at a specific time period and that it has been searchable as mentioned above.

Hence, just putting up a publication on your website for a couple of weeks is not enough. Some degree of proof is required for it to have been there. (In decision T 1711/11), an entry in the Wayback Machine (archive.org) was found to provide sufficient proof of a web page being public. However, there is no guarantee that this might suffice in all jurisdictions and that all data of the Wayback Machine will be available in decades to come. Hence, more solid proof is advisable.

2. Give the gory details

To be useful against a later patent, the defensive publication should contain all information that might be claimed in that patent.

For example, if you have developed a new method to prepare cheese from soy milk, the publication should include more than just vague statements about it. Describe the process parameters in detail. If you don’t, the later patent applicant may argue that your publication (a) does not provide enough detail to make such a cheese (in which case it might be irrelevant as prior art), and/or (b) the later applicant may get a patent for parameters that you have failed to disclose.

Also, as mentioned above, make sure that your publication can be retrieved, e.g. with keywords such as “cheese” in combination with the relevant ingredients.

Where to publish?

As mentioned, the publication needs to be “searchable and provable”. The more reputable the publication site, the better your chances that a patent office or court will accept the publication as prior art.

When it comes to internet publications, IP.com and Research Disclosure are two of the most reputable sites out there.

Research Disclosure is on the list of the WIPO’s minimum documentation that must be considered by the patent offices performing searches for international patent applications. IP.com is — according to a communication from the legal division of the European Patent Office — “accessible to the EPO search divisions through an internal electronic virtual library”.

IP.com has a publicly available, free search engine and even allows its files to be indexed and retrieved by usual web search engines. This might help in some jurisdictions (and at some courts) to establish that a document fulfills the criteria for being publicly available.

One other means for posting defensive publications online are scientific repositories, in particular open-access repositories. These tools, such as arXiv.org, are particularly well-suited for science-centered content. Again, though, make sure that your document is complete and searchable.

Research Disclosure and IP.com have both been considered acceptable prior art databases by the boards of appeal of the European patent office (see e.g. T 2114/16 and T 1953/14 for Research Disclosure and T 2185/16, T 2374/11, T 2185/16 or T 2304/14 for IP.com). Also, there is at least one decision, T 1808/15, where arXiv.org has been accepted as valid prior art.

As to costs, IP.com presently charges (for non-enterprise clients) USD 395 for each publication (plus USD 45 per page if you want to be included in the printed version). Research Disclosure is at EUR 90 per page, which I understand to include the online and print editions. arXiv.org seems to be free, but you need to be a registered author and an endorsement is required. Note, though, that the costs for properly preparing a disclosure will generally be higher (in terms of (wo)man-hours required in its drafting even if you don't let your patent attorney prepare it).

Whatever you use, I recommend using one of the larger sites with a sustainable business model, which may be more likely to survive for a couple of decades. (As it has been found in a recent publication by Laakso et al. on arXiv.org (!), more than 170 open archives have vanished between 2000 and 2019. Even though it may be possible to retrieve content from such lost sites through the Internet Archive, (the Wayback Machine), such access may not be guaranteed.)

Alternatives to defensive publications?

1. Patent applications

Patent applications are an interesting alternative to defensive publications. Since a defensive publication must anyway describe the idea in detail, drafting a patent application may not require much more effort. And if you choose an office where the fees are low (such as the Swiss Federal Institute of Intellectual Property), the advantages of getting at least some local patent protection may outweigh the additional costs.

Moreover, if you want your patent application to quickly prevent third parties from gaining IP for the same subject, consider filing a request for accelerated publication — without such a request, a patent application will be published only 18 months after its first filing date. Until that time, it will be a less effective weapon against third party patents. (Note, however, that there are, in some situations, drawbacks to accelerated publications. Make sure to discuss them with your patent attorney.)

2. Keeping it secret

Keeping the idea secret may, in some cases, be another alternative.

In that case, though, it can still be helpful to document that you were in possession of a certain idea at a certain time. Hence, it may be a good idea to obtain an electronically timestamped and signed copy of your documentation, see e.g. this post for more details: WIPO PROOF under the loupe by Sébastien Ragot. (Note, while such documents are certified, they are not published. Hence, they will usually not help you invalidate a subsequent patent. However, they may come in handy when you need to prove that an idea was from you, e.g. in collaborative development. And, under some conditions, they may allow you to establish a “prior use right”.)

Conclusions

Defensive publications can be an effective tool if you want to make it hard for third parties to get a patent granted in a given field.

However, when using them:

• Know their pros and cons;
• Draft them carefully to include all relevant details (or have your patent attorney draft them); and
• Publish them on a platform where they are well searchable and that provides solid proof (or is generally accepted by the authorities)."