Defensive Publishing: The Key to Gaining and Keeping the Competitive Advantage.

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?


Invention Review Process

Invention Review

Patent?Yes NoApply for

Patent

No

Yes

Disclose?

Anonymously?

No DiscloseEntire

Invention?

Disclose?

No

No

Yes Enact AnonymitySafeguards

RefereedJournal?

Yes

No

Select the Part to

Disclose

Write Publication

Attach Supporting

Material

DiscloseOn IP.com

Disclose in RefereedSource

Intellectual PropertyReview

Yes

Inventions In

YesInternal Intellectual Property File

Proof of Inventions

File


Patent?

Invention Review

Patent?Yes NoApply for

Patent

No

Yes

Disclose?

Anonymously?

No DiscloseEntire

Invention?

Disclose?

No

No

Yes Enact AnonymitySafeguards

RefereedJournal?

Yes

No

Select the Part to

Disclose

Write Disclosure

Attach Supporting

Material

DiscloseOn IP.com

Disclose in RefereedSource

Intellectual PropertyReview

Yes

Inventions In

YesInternal Intellectual

Property File

Proof of Inventions

File


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?


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?


• 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


Dominated

05

10152025303540

A B C D E F G

Company

Patents

Patents


Contested

05

10152025303540

A B C D E F G

Company

Patents

Patents


Stable

05

10152025303540

A B C D E F G

Company

Patents

Patents


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?


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?


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.


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?

SegaDreamcast

MicrosoftXBox


1. Your client innovates in a technical area.

2. Other organizations begin to claim broad spaces in the same technical areawith 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


1. Your client patents an invention.

2. Your client’s competitor patentsan incremental improvement to your client’s invention.

3. Your client wish to incorporate the incremental improvement, but a competitor’s patent createsa 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


1. 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.

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Problem 3


Solution

You periodically review with your client pastand 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 interviews2. Brainstorming3. Focus groups4. Creativity theory5. Legacy invention review


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.


• 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?

Defensive Publishing: The Key to Gaining and Keeping the Competitive Advantage.

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Transcript of Defensive Publishing: The Key to Gaining and Keeping the Competitive Advantage.