How do you prevent competitors from obtaining patents that could block you from using your own innovative ideas in your products and services? This critical question faces managers of innovation and intellectual property throughout the global economy, which is increasingly embroiled in a hotly contested patent race.
Issued patents can be deadly. Enterprises of all stripes face burgeoning risks that competitors will obtain blocking patents. Even strong manufacturers with worldwide distribution, well-branded products and adoring customers can be stopped dead in their tracks by broad competitive patents.
Just how deadly are competitive patents? Consider this, if your competitor is granted a patent broad enough to prevent you from making or selling products and services, you may be forced to litigate. Average legal fees to defend a patent case are over $1.5 million regardless of the outcome. Verdicts and judgments in patent cases can easily exceed eight figures. Even greater costs can be incurred in attempting to design around competitive patents after product launch, or being shut down by a preliminary or permanent injunction.
There are myriad methods for protecting innovation and intellectual property. One answer is to join the patent race. But be prepared to spend. Average legal fees to file one patent application in the U.S. are in the range of $12,000-$15,000. Multiply that by three or four to file applications in key locations throughout the world. Then add over $100,000 to maintain each patent in those locations throughout its life. All that cost for one invention. The problem grows when you consider that for most companies, the number of inventive ideas exceeds the number of budgeted patent applications by at least ten times.
To compound the "cost of getting a patent" problem, consider the recent Supreme Court ruling (KSR Int. v. Teleflex, Inc.) relating to an overwhelmingly important concept called "obviousness." This verdict has essentially made it harder to get patents and harder to enforce already issued patents. This means patent acquisition cost has gone up and patent value has gone down. In most cases, it is simply not cost effective to go through the patent process.
What are the alternatives to patenting?
If created and protected correctly, trade secrets can have real value. But, beware. In today's environment, protecting trade secrets is often unrealistic. Increased competition has driven more aggressive pursuit of information by competitors with access to previously inaccessible data sources and previously unheard of data mining tools. That, coupled with increased employee mobility and ease of communication has made it virtually impossible to keep secrets. Companies may not appreciate the risks associated with the use of trade secrets until after they see their ideas claimed in competitive patents.
Pros and Cons of Patents, Trade Secrets, and Defensive Publications
Patents -- Pros
|Quasi monopoly... prevent competition from making, using, or selling your invention|
|Higher product margins|
|A tangible corporate asset|
Patents -- Cons
|Patent protection is territorial|
|Patents have a limited duration|
|Patents have limits of scope|
|Lack of enforcement in many countries|
|Fact of life: Most patents are never used for any purpose|
Trade Secrets -- Pros
|An unlimited term (as long as the secret remains secret)|
|Applicable to a wide variety of technologies|
|Lack of standards to meet|
|Civil and criminal penalties for theft|
|Undisclosed in the marketplace -- less chance of discovery|
Trade Secrets -- Cons
|Risky -- loss of protection if the secret is disclosed|
|Process MUST be in place to establish a secret as a "Trade Secret"|
|The existence of well-established defenses against infringement (including claim to independent discovery, inadvertent disclosure by owner, and reverse engineering)|
|The requirement of a "separate, actionable wrong-doing" for infringement|
|Lack of enforcement in many countries|
Defensive Publishing -- Pros
|Inexpensive method of blocking competitive patents|
|Immediate way to protect incremental improvements to already patented technology|
|Anonymous publications can thwart competitive intelligence|
Defensive Publishing -- Cons
|Double-edged sword -- all patent rights are burned|
|Potentially ineffective if not published in proper publication outlets -- patent examiners need easy access to find and cite prior art|
How can defensive publishing be incorporated into an IP strategy?
With patenting on the rise, patent offices have become overburdened. This has resulted in patents for technology that has already been in the public domain, sometimes for years. Why? Because patent examiners have very limited time and resources to search prior art. As a result, many references that examiners could use to reject patent applications are never found.
The first reaction some have when considering these issues is to defensively publish everything. However, defensive publications can be a double-edged sword. If placed in the right prior art database, they can be powerful weapons for destroying competitive patents. But, they can also be powerful weapons for destroying your own patents. So, to get started it's a good idea to properly disclose innovation that has already been placed in the public domain, but isn't in a location readily or easily utilized by patent examiners.
Product descriptions could be a great source for prior art to support final rejections of overly broad competitive patent applications. Again, the problem for examiners is finding them. Examiners only have a few hours to do a full prior art search for each patent application. When considering the enormity of prior art sources, a few hours is nothing.
To make an effective public disclosure of technology, it comes down to a question of reasonable access. Ideally, all product descriptions should be placed in a location searched by worldwide patent examiners. Since these are in the public domain anyway, publication of product descriptions does not need to be delayed by an IP review process.
Conference Publications and Journal Articles
All papers submitted at conferences and journal articles place information -- often innovative information -- into the public domain. The questions become, "What's the likelihood that a conference is attended by patent examiners? Will the journal articles be placed in a location easily searched by patent examiners?" The answer is "No" to both.
Patent examiners are simply not able to keep pace with the patent race. They cannot be everywhere or even search everywhere. Many IP savvy companies make it a practice to concurrently publish all conference proceedings in a location searched by patent examiners.
What about disclosures that are not already in the public domain?
In cases, like those mentioned above, where the public disclosure has already been made, for better or worse, no further decision is necessary. You can simply publish without fear of burning your patent rights, because either (a) you have already filed, or (b) your rights are already burned. But what about cases where there has been no previous public disclosure of the invention? This is where a process comes in -- a publication clearance process.
Publication Clearance System: Publication Clearance is becoming more and more popular as more and more brilliant inventions are forever lost to the public domain. There has always been a conflict between IP groups and their need for secrecy to protect patent rights, the innovators of a company or university and their desire for public recognition, and marketing communications groups, charged with generating public exposure. This conflict can be overcome by a simple publication clearance system (typically implemented through workflow) that touches the key decision makers for their input before a disclosure is published.
Invention Review Committee (IRC): IRCs have been around either formally or informally for years and years. But typically the decisions at these committees are limited to whether or not to file a patent application. Since most invention disclosures do not end up as patents (often for budget reasons), most inventions live lives of quiet desperation; they never become anything to anyone. These inventions often consist of incremental improvements of core inventions, or new uses. They are not worthy of patenting, and since patenting is the only question before the committee, these rejected disclosures can never be put to work.
IRCs also need to ask this critical question: "Should we publish?" A defensive publication can be used as a weapon. No longer will those castaway disclosures live out eternity in the dark confines of a desk drawer or as anonymous bytes in a hard drive. With the right questions being asked during an IRC meeting, they can be used to prevent or defeat competitive patents throughout the world.
Tom Colson is President and CEO of IP.com, which provides enterprise-wide innovation management solutions. IP.com provides both web-based and desktop solutions to facilitate rapid and reliable publication of technical disclosures as well as providing irrefutable protection of electronic documents. http://www.ip.com