Case study - DEFENSIVE PUBLICATION

HOW TO APPLY DEFENSIVE PUBLICATION IN YOUR
IP PORTFOLIO STRATEGY.

DEFENSIVE PUBLICATION IN IP PORTFOLIO
- What is defensive publication? -

Defensive publishing is a proactive IP Strategy by disclosing Invention Descriptions into the public domain. Corporates use this approach to block competitors from obtaining protection with details of the same inventions since the requirement of novelty is destroyed after an invention has been published.

Defensive publishing is also suitable for “re”-processing low-priority inventions when the core development is secured with other IPRs such as patents or utility models.

Along with obtaining IPRs, Defensive publishing is complementary to the company’s IP Strategy. However, it neither substitutes the protection & value provided by patents nor grants a freedom to operate in the narrower sense.

There’s only one basic principle of self-defense: you must apply the most effective weapon, as soon as possible, to the most vulnerable target.

- Bruce Lee -

LEGAL CRITERIA OF ELIGIBLE DEFENSIVE PUBLISHING
- “Patent” requirements for non-patent documents -

According to USPTO’s legal requirements, Defensive publishing must be publicly accessible to be recognized as prior art, so that interested parties can obtain them as desired. Furthermore, accurate time stamping of publishing timepoint is a requirement for document verification.

As Defensive publishing can be used in either patent prosecutions or litigations procedures, these documents demand great care in terms of describing subject matter and related technical details. The disclosure should be sufficient to be considered as enabling a skilled person in the art. It must be, after all, in sync with IP Portfolio Strategy and projected inventions for exclusive protection.

AN EFFECTIVE IP GOVERNANCE
- Do IP activities consider your business strategies? -

Sometimes, it depends on corporate’s business goals whether the inventions should be filed as patents or IPRs. Some technical ideas are compelling; however, they may not be patent-worthy and beneficial due to the high estimated cost and legal resources. We can still leverage these ideas and their associated values. One possible approach is to publish a defensive publication to a public database. This could be done by printing and publishing a physical book via print-on-demand services. Or you can publish the documents on a public disclosure database so that the technology is publicly available for effective blocking and preventing others’ patent issuance.

Another factor is time. If you publish your documents too soon, the competitors learn about your business’s strategy and self-leverage on your technology. For late publication, you could lose your prior art advantage due to earlier IPRs filings.

And lastly, depending on the amount of information you want to disclose, the visibility level of your documents can be adapted accordingly. If the disclosures contain sensitive information, publishing with low visibility is one option for potential litigation purposes. On the other hand, if you intend to use your publications to prevent others from obtaining patents, you should make your documents highly visible prior to arts. This approach is optimal for non-core inventions, ringfencing, and design around against competitors’ IPRs.

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DEFENSIVE PUBLICATION HANDLING
- Our case study: EVOip's support in defensive publishing -

Our client is a multinational home appliance manufacturer and one of the largest suppliers with > 50.000 employees worldwide and generated in 2020 approx. 15 bil. US $ in revenues. Their existing IP Portfolio consists of > 12.000 patented inventions and > 3.000 patented inventions to manage. The company is in need of technical support in drafting its invention descriptions for defensive publishing. They want to embed defensive publication in the development of public domain knowledge. However, enabling effective, descriptive documents of the claimed invention, which satisfies the formal requirements from patent offices, requires great internal effort.

On the one hand, our client wants to develop an effective and timely defensive publication course of action, to ease their in-house resource and strengthen their existing innovative IP Portfolio. On the other hand, in harmony with IP protection, cost efficiency must still be guaranteed due to budget constraints.

Another factor is time. If you publish your documents too soon, the competitors learn about your business’s strategy and self-leverage on your technology. For late publication, you could lose your prior art advantage due to earlier IPRs filings.

And lastly, depending on the amount of information you want to disclose, the visibility level of your documents can be adapted accordingly. If the disclosures contain sensitive information, they should be published with low visibility for potential litigation purposes. On the other hand, if you intend to use your publications to prevent others from obtaining patents, you should make your documents highly visible prior to arts. This approach is optimal for non-core inventions, ringfencing, and design around against competitors’ IPRs.

OUR SOLUTION FOR SUFFICIENT PUBLICATION
- How EVOip creates a novelty-destroying prior art -

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PREVIOUS SITUATION:

The process and scope of our provided service are carried out as follows: After the overhanding of Invention Disclosures to EVOip by our clients, EVOip’s patent engineers draft Defensive publishing   and enhance documents’ quality with cross-referenced prior arts, examiner-friendly content and translations. These files will be overhanded in an editable and ready to publish for reviews format. Upon review and acceptance by the clients, Defensive publishing will be published in a public database for proof of existence and consistency in time. After our first year of collaboration, EVOip handles > 50 invention disclosures during the first year of collaboration with flat price agreement.

Our team of IP specialized engineers, whose expertise includes drafting and handling invention disclosures forms, was put together for ideas evaluation, invention formulation and quality control. With the experience in the fields of mechanical engineering, electrical engineering, and machinery industries, the EVOip’s patent engineers were able to provide hands-on expertise and a multi-dimensional approach, yet still, fulfil document’s requirements of sufficiency and existence.

THE OUTCOME:

Together with our client, we develop a strategy to maximize inventions’ value. All handed over documents and case-related data were handled with the highest care and confidentiality. A solid and viable protection is secured. Drafted defensive publications are accepted with beyond satisfactory. EVOip team was able to meet all deadlines and continues developing strategies for our client’s IP portfolio optimization.

EVOIP’S CLIENT TESTIMONIALS:

Thanks to the support from EVOip’s patent engineers, we are able to lessen existing pressures and effort in drafting and publishing defensive publications. The communication and on-boarding process were smooth and straightforward.”

- Head of Global Group Patents -

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Defensive Publication as a solution -
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