Defensive Publishing: The Key to Gaining and Keeping the Competitive Advantage
Copyright © 2001 IP.com, Inc. – All rights reserved.2 What a Technical Disclosure Is and Is Not Is this invention really free for you to adopt?
Copyright © 2001 IP.com, Inc. – All rights reserved.3 Invention Review Process
Copyright © 2001 IP.com, Inc. – All rights reserved.4 Patent?
Copyright © 2001 IP.com, Inc. – All rights reserved.5 Should I Patent? What is the nature of the technical niche? Will a patent create a business advantage? Am I willing to go to war over this patent?
Copyright © 2001 IP.com, Inc. – All rights reserved.6 What Is the Nature of the Technical Niche? Contested? –Who are the players? –What conditions will create a dominant player? Dominate Player? –Who dominates? –What conditions will create a contested technical niche?
Copyright © 2001 IP.com, Inc. – All rights reserved.7 Zipf’s Law 1 – 1/2 - 1/3 – 1/4 - 1/5 log (freq) log (rank) Contested and Dominated Technical Fields – Guideline for Patent/No Patent Decisions
Copyright © 2001 IP.com, Inc. – All rights reserved.8 Dominated
Copyright © 2001 IP.com, Inc. – All rights reserved.9 Contested
Copyright © 2001 IP.com, Inc. – All rights reserved.10 Stable
Copyright © 2001 IP.com, Inc. – All rights reserved.11 Will a Patent Create a Business Advantage? Will a patent strengthen an existing patent position? Will a patent weaken a competitor’s position? Does applying for a patent make sense in relation to my business? Can or will I build a position from a patent if it is granted? –Defendable technical space? –Picket fence?
Copyright © 2001 IP.com, Inc. – All rights reserved.12 Am I Willing to Go to War Over This Patent? Am I willing to go to war over this patent? –If yes, then patent it. –If no: Is this patent something someone else would go to war over that gives it licensing/trading value? Will not defending this patent cause competitors to question my willingness to defend other patents?
Copyright © 2001 IP.com, Inc. – All rights reserved.13 Limits and Priorities If an invention review affirms that you should patent an invention, prioritize it in relation to your allocated budget and other affirmed patentable inventions. If an invention review does not affirm a need to patent an invention, or if an affirmed invention falls below others in priority beyond your budget, consider an invention disclosure.
Copyright © 2001 IP.com, Inc. – All rights reserved.14 An Ever Present Danger Has your client’s innovation ever been blocked by a competitor’s patent? Was this the result of a deliberate or an incidental action by the competitor? Sega Dreamcast Microsoft XBox
Copyright © 2001 IP.com, Inc. – All rights reserved Your client innovates in a technical area. 2. Other organizations begin to claim broad spaces in the same technical area with patents. 3. These patents block your client from claimed spaces and force your client to work around their claims or fight expensive invalidity defenses. Problem 1
Copyright © 2001 IP.com, Inc. – All rights reserved Your client patents an invention. 2. Your client’s competitor patents an incremental improvement to your client’s invention. 3. Your client wish to incorporate the incremental improvement, but a competitor’s patent creates a block. 4. Best case, your client is inconvenienced. Worst case, your competitor forces your client to cross license the inventions and so captures your client’s technology. Problem 2
Copyright © 2001 IP.com, Inc. – All rights reserved Your client patents an invention. 2. Another company patents a use of that invention. 3. The other company restricts your client’s freedom to develop and/or sell the original invention. $ Problem 3
Copyright © 2001 IP.com, Inc. – All rights reserved.18 Solution You periodically review with your client past and present inventions to find/create incremental improvements and new uses of those inventions that your client can disclose before other companies patent them. 1.Inventor interviews 2.Brainstorming 3.Focus groups 4.Creativity theory 5.Legacy invention review
Copyright © 2001 IP.com, Inc. – All rights reserved.19 Three Option Pairs 1.Patent 2.Trade secret 3.Do Nothing 4. Disclose a. Disclose as Author b. Disclose Anonymously a. Disclose Defensively b. Create an Early Technical Disclosure a. Disclose Part of an Invention b. Disclose an Entire Invention Note - All the technical disclosure tactics that follow can be created by combining any of these options together in different ways.
Copyright © 2001 IP.com, Inc. – All rights reserved.20 Will disclosing the invention increase the zone of protection around my patents? Will disclosing the invention where patent examiners can find it in their prior art searches help me? Will disclosing an invention or part of an invention increase the market value of other inventions I control? Disclose or Keep Secret?
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