Are You Neglecting the Power of Defensive Publications?

One of the most important lessons I learned about intellectual asset strategy during my time as Corporate Patent Strategist at Kimberly-Clark Corporation was the value of aggressive defensive publications. IBM, one of the world's leaders in extracting value from its patent estate, publishes about half of all its invention disclosures. One of my favorite IA strategists, John Cronin of ipCapital Group, taught us some of the reasons for IBM's aggressive publishing and some of the unexpected benefits of publishing. He was one of the drivers of IBM's early and successful efforts to generate revenue by licensing its estate. One of their early efforts involved a patent for a technology (scanning tunnelling microscope) where the value of a patent estate ended up being reduced by about 90% due to a group of minor improvement patents on top of the foundational IBM patent. Many of the improvements were things that IBM had thought of but didn't feel were worth the cost of additional patents. They realized that such improvements needed to be disclosed to create prior art that would stop others from getting patents for all those minor variations or minute improvements, thereby increasing the value of their own estate.

The IBM STM story is behind this passage from Richard Poynder's 2001 article, "On the Defensive about Invention":

As patenting strategies become more sophisticated, so the value of defensive publishing increases. It can, for instance, protect against picket-fencing - where competitors patent small incremental improvements in your patent in order to erode its value and enable them to license your technology on preferential terms.

In 1982, for instance, International Business Machines was granted a US patent for the scanning tunnelling microscope (STM) capable of imaging atomic details as small as 1/25th the diameter of a typical atom.

At first IBM dominated the STM field. By 1989, however, it had been picket-fenced by competitors.

"If IBM had published disclosures of all of the incremental innovation around their pioneering technology, they could have prevented others from picket-fencing them," says Tom Colson at IP.com. "They would, in effect, have taken full control of the technology without putting patent resources at risk."

Such blocking tactics can also be achieved by patenting the incremental improvements, but defensive publishing is significantly cheaper. "It costs $109 ( £75) per document to publish on IP.com," says Mr Colson. "This compares very favourably with the $20,000 it costs per patent application to file in key locations worldwide."

The price at IP.com has come up since then, but it's still an incredible bargain. For a very small fee, your document is almost instantly published and time stamped, archived, and made searchable by the PTO and other patent offices, providing a lasting and secure record that the information disclosed was part of the public domain at that time.

Some of you with corporate R&D or IP experience have faced the pain of seeing competitors get patents on things you had considered long ago but thought were too "obvious" or minor to be worth a patent. An important lesson from IP litigation is that even an invalid patent can still be a major headache, one that can cost millions. Much better to reduce the odds of such nuisance patents by creating a strong body of prior art that discloses bells and whistles as they come up and also discloses various combinations that competitors might be working on to reduce what they can patent in the fields important to you.

Publications need to be crafted for strategic purposes. There are quite a few issues to consider, such as how to get the internal review needed to avoid harmful disclosure, how to get them written, what kind of incentives to provide for inventors/authors, whether to publish anonymously or not, and what venues to use (IP.com is one of my favorite), etc. I'll be discussing some of these issues in the future, but feel free to give me a call if you'd like to learn more.

When Innovationedge helps a company strengthen their innovation strategy or IP strategy, defensive publications are usually one of the key topics we address. We find very few companies do anything serious in this effort, and many Legal Departments seem inherently geared to overlook the benefits that can be obtained with creative publications. That's understandable. The IP attorneys are all about IP, and publications don't fall into the "P" area of property. They are intellectual assets, however, that must not be neglected for cost-effective IP strategy.