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Defensive Publications

My colleague Dr. Bakuri Lanchava has published an article about creating prior art publications.

https://www.linkedin.com/pulse/defensive-publication-part-patent-strategy-dr-bakuri-lanchava/

"The basic idea of the defensive publication (“Sperrveröffentlichung” in German) is to create a State of the Art or Prior Art which is citable against patent applications filed by competitors. Since the patentability criteria of an invention, such as Novelty and Inventive Step, are determined with respect to the state of the art, after publishing the inventions, it is not patentable by others.

Thus, the defensive publication of an invention can be used for preventing competitor from patenting the same invention.

1. Definition of the Prior Art

The definition of the state of the art or prior art is largely harmonized across patent systems. According to Article 54(2) EPC, the State of the Art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. The formulation “or in any other way” shows that the way in which the invention has been made available to the public does not play any role. It’s all about the result.

Similar definitions exist in other jurisdiction, e.g. in Germany (§ 3 (1) PatG), US (35 U.S. Code § 102 (1), or Singapore (SG Patents Act Section 14(2)).

It is worth noting, that the Singapore Patents Act provides one of the most comprehensive definitions of the Prior Art, comprising examples directly included in the legal definition, SG Patents Act Section 14(2): “… all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in Singapore or elsewhere) by written or oral description, by use or in any other way”.

2. Where to Publish? Where Nobody Looks.

The bad news with the defensive publications is that by publishing the invention it becomes available to the public, and hence also to competitors.

Here lies the dilemma of defensive publications. On one hand, you want to create a prior art such that competitors cannot patent the invention, and on the other hand, you don’t want the competitor to gain access to the technical teaching described in the defensive publication. Ideally, the defensive publication should be available to the public but at the same time difficult to find.

3. Online-Publishing

It is widely acknowledged that the prior art also may comprise online-publications, which are considered as “otherwise” made available to the public within the meaning of the statutory definition. Modern online publishers such https://www.lulu.com/ or https://priorart.ip.com/ makes it possible to adjust the searchability of the published documents. In other words, we can make it easier or more difficult for competitors to find the document.

Despite the similar definitions of the Prior Art in different jurisdictions, there are differences in its interpretation. In the US, for instance, more stringent prior art criteria may apply as compared to Europe. In particular, under certain circumstances, an online-published document may be regarded as available to the public in Europe, but not in the US.

If the searchability of the document is reduced to such a level that it is practically impossible to find the document, it can hardly be considered as having been made available to the public. However, this kind of “publishing”, which is more archiving than publishing, can also be very helpful for documenting internal state of the art by archiving documents. In such a case, the Benelux i-DEPOT can be used.

4. Making Decision to Publish an Invention

  • There are different options for handling invention disclosures:
  • File a patent or utility model application,
  • Archive the invention, e.g. to keep it secret or to follow-up later,
  • Publish the invention as a defensive publication,\
  • Release or reject the Invention, e.g. as irrelevant for the company.
  • To find out which option fits the client’s needs is not always an easy task. In addition to the patentability criteria, such as Novelty and Inventiveness, several other factors - depending on the Patent Strategy - can influence the outcome of the decision-making process, such as:

Relevance for the market or product portfolio,

  • Technological feasibility,
  • Attractivity for competitors,
  • Ease of detecting infringement,
  • Budget constraints,

Because of the different influencing factors, the decision is often made by a team or Patent Committee. However, even for a team of experts, the decision-making can be a challenge. Therefore, sometimes specially developed schemes for evaluating inventions, based on value numbers and weighting factors, are applied in order to facilitate the decision-making process.

In some black-white cases, if the invention evaluation results in a maximum value number or a minimum value number, it can be quickly decided to file a patent or to reject the invention. However, for the mid-range segment, in particular in view of budget constraints, publication or archiving of the invention can be a better choice.

Available time for making a decision can be very limited. Sometimes, there is a strict deadline for making the decision, e.g. because of an exhibition where the invention is to be presented or because a prototype is to be sent out urgently. Even without any such imminent event, the decision makers are often working under high time pressure because of tight agenda. In large multinationals, for instance, available time for making a decision on invention disclosers is often less than 10 minutes per invention.

5. Exploitation of Defensive Publications

Defensive publications are not very often referred to. Moreover, in the majority of cases, the defensive publications are never used against any patent. The relatively modest role of the defensive publications has several explanations:

Defensive publications do not confer any enforceable monopoly right which can be used against competitors,

Defensive publication may contain sensitive information about the internal know-how. Therefore, one has to think twice before making it available to the public,

In case of hard-to-find publications, the availability to the public might be questioned,

Defensive publications reflect an instance or snapshot of the state of the art, which is subject to constant change. Therefore, in the course of the technological progress, it’s relevance can be affected.

6. Defensive Publications and “Arbeitnehmererfinderrecht” (Employee Inventors’ Entitlement)

This is a very German aspect of defensive publications. According to the “Gesetz über Arbeitnehmererfindungen” (German Employee Invention Act), if an employee submits an invention disclosure to the employer, and if the employer “claims” the invention (e.g. as relevant for the company), the employer is obliged to file a patent application.

Deviation from this general obligation of the employer to file a patent application is possible upon a special agreement with the employee.

Such an agreement usually involves a lump-sum payment to the inventor by the employer when the employer claims the invention as being relevant for the company.

In any case, before publishing the invention, the employer should make sure that all legal questions regarding the rights of the employee are settled.

7. Public Security Issues

Many countries have regulations in place that limit the filing of inventions overseas before the administration has exercised its say over the respective subject matter. Examples are nuclear technology, military relevant technology, etc.

For patent applications, this may be regulated by the patent law, e.g. in Singapore by Section 34 Singapore Patents Act and in Germany by § 50 PatG. For defensive publications, other regulations may be applicable, e.g. the Strategic Goods Control Act Singapore or § 94 StGB, Criminal Code of Germany.

8. Conclusion

Online-publishing is relatively cheap and can be effectively used for creating a prior art citable against patent applications of competitors. The availability, e.g. dissemination, searchability, price etc. of the on-line-published defensive publications can be adjusted in accordance with the client’s patent strategy.

Before publishing, defensive publications should be thoroughly checked for sensitive information that is not supposed to become available to the public.

In a team working under high time pressure, it can be difficult to make a decision to go ahead with defensive publication. Unless the decision to trigger a defensive publication is made by the leader of the team."