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Defensive Publication


In this strategy, the technology is made known in the art before anyone else can develop and patent the technology. This benefits a business because an aggressive competitor cannot patent the technology and sue the first business.

On the down side, the technology that was disclosed could have been secret, proprietary, and otherwise a trade secret. In essence, the cat is being let out of the bag.

There are several ways to get technology into the public domain, and some are better than others. Publishing papers, including publishing research on the Internet, is one way to get the information in to the public domain.

However, one of the best ways to ensure that the information will prevent the stronger competitor from obtaining patents on the technology is to make sure that the patent examiner uncovers the first business’s disclosure.

Since the examiner spends a vast majority of his or her time searching patent archives over any other searchable resource, the best way to get the information publicly disclosed is to file a patent application that is published.

For a patent application to serve as a roadblock for a competitor’s patent, it merely has to be published, and never needs to be issued. This means that a defensive patent application could be filed with a request for early publication. For a small entity in the US, this cost is currently about $800. If no further action is taken, no patent will issue, but the disclosure will be in the patent system, classified in the classification system, and instantly searchable by the examiners against all future patent applications in that field.

No matter where the technology was defensively published, the point is to get the disclosure into the hands of the patent examiners. If the disclosure is in an obscure source that is not brought to light during a competitor’s patent prosecution, the competitor may eventually get an issued patent and try to enforce it. Even though the first company published the technology in an obscure source that would invalidate the patent, the first company is burdened with the horrendous cost and expense of defending a lawsuit. It is much, much more cost effective to make sure the competitor does not get the patent in the first place.

This strategy makes sense when a very small company is worried about being put out of business by a very aggressive competitor who can afford the costs of litigation. It also makes sense when a company’s strength is in other areas. For example, a company may be relatively weak in technology development but may have a superb sales and distribution force or a very powerful trade name and goodwill. Here, the business merely wants to keep competitors from using patents against them, and the company will use its superior marketing and distribution as its main advantage.

This strategy may be combined with one or more of the following strategies, depending on a business’s strengths, weaknesses, and long term business strategies.