Defensive Publication Or Patent Application: Which Works Best? – Patent – Luxembourg – Mondaq
There are many forms of Intellectual Property (IP) defense,
some of which can appear unconventional or counterintuitive at
first glance. The action typically called a “defensive
publication” falls into this category, but it has a specific,
valuable purpose in your IP arsenal.
Opting for a defensive publication instead of a patent
application can be the best move in some situations. But you must
exercise a certain degree of caution when you use this particular IP defense — and that level of
discretion begins with understanding the ins and outs of the
What is a defensive publication?
Any public announcement that contains the essential details or even
workings of an IP asset — typically a patent-eligible
invention, method or system — can constitute the defensive
Also sometimes known as a protective disclosure, this publication
generally includes an abstract, drawings, photographs, claims,
description and any other elements you would have in an obvious
application for a given jurisdiction. Like its better-known patent
counterpart, a defensive syndication illustrates enablement and
validates that the disclosed technology is novel, useful and
non-obvious (or “contains an inventive step” in a
European legal context).
The ideal effect of the defensive publication is to deter rival
organizations and / or inventors by establishing that the depicted
invention will be prior art. Consequently, someone filing a patent
application for an identical or very similar invention would most likely be rejected by examiners because
the defensive disclosure might show up inside a thorough prior art plus
In practice, there is no official procedure for releasing the
defensive newsletter, and any publicly accessible medium could
suffice; it could be a self-printed booklet, a website blog post or
a paid advertisement within a major media outlet. But keep in mind that “public” is the crux of the matter here. For this
disclosure to have substantive weight — especially if it is
likely to provoke lawful challenges — it would be wise to
release it to the relevant audience through a technical or even industry
journal, an academic publication or a prior-art publishing
Though a newspaper could satisfy the needs of disclosure, the
resulting defensive publication might not withstand committed
opposition. A specialist journal or magazine along with adequate
distribution would be a more suitable choice.
When is a defensive publication more useful than a patent
Defensive guide may be a better option than seeking obvious
protection in a number of cases. The following are among the most
common circumstances where this might be:
- Likelihood of high costs: The expenses necessary to file,
attain and maintain a patent grant can be significant, especially
when it comes to keeping up with regular patent renewal payments in
multiple jurisdictions. If these expenses noticeably outweigh the
benefits of full-fledged obvious protection, disclosure can be a
- Fast-moving industries: Rapidly developing technology sectors
— especially consumer electronics — are full of
products that become actually or effectively obsolete within just a
few years. While some components in this field, like battery or chip
technology, may have extended shelf lives that would benefit from
patent rights, there are numerous other instances in which
patenting would be cost-inefficient.
- Fierce competition: If you know your competitors are working on
an invention identical or even very similar to yours, the technical
disclosure of your IP can throw a big part of their strategy into
disarray. In this example, the best defense is indeed a good
In all of these cases, a defensive publication puts the IP into
the public sphere. Even disclosing only certain aspects of the
creation ensures that the subject matter becomes prior artwork, making
this extremely difficult for a particular examiner to allow any
meaningful claims that contain the published material. Thus, a
shielding publication can secure your freedom to operate while
reducing filing, prosecution and maintenance expenses.
Defensive publication drawbacks
Sometimes, taking the defensive publication route is not the
right move — or can even backfire. In the end, defensive
posting authorizes anyone to take your IP and use it as they
A defensive distribution is a double-edged sword and can affect
you as much as your competition. By disclosing, you allow anyone to
exploit your innovation and forfeit exclusivity rights that could be
used to generate licensing revenue.
Also, because protective publication is equivalent to prior art
and bars the relevant material from being the subject of any kind of
meaningful obvious protection, it counts against all future filings.
This means your own filings are impacted in the same way as your
competitors’. There are some narrow exceptions to this that will
vary around the world, for example:
- Utility or design patent filings in the United States with
filing dates no later compared to one year after the disclosure may
contain a good inventor’s prior art. Otherwise, Title 35 Section 102(a)(1) provisions
- Japanese Patent Law (JPL) Article 30(2)
provides a similar one-year grace period following the defensive
distribution, during which a patent program containing former art
can still be filed.
- Under Post 55 of the European Patent Convention
(EPC), the European Patent Office (EPO) will not count public
disclosure towards a patent applicant provided they document no later
than six months after disclosure and the prior art was
publicized through some malfeasance (“evident abuse”) or
as part of “an official, or officially recognized,
international exhibition. ” (These are primarily scientific and
industry exhibitions. )
Last but not least, any lack of clarity in the defensive
syndication (e. g., informal or even vague language that could be
potentially misinterpreted or misunderstood) weakens its efficacy.
Precision is key, and the disclosure must also avoid excessively
detailed information as this could similarly inhibit clearness.
Crafting the multifaceted IP strategy
No sound IP management / protection strategy is myopic or
inflexible — it must be ready to use all available tools in
the appropriate times. Identifying when to publish defensively and
whenever to go down the traditional patent route is critical to your
long-term innovation goals.
The decision to employ a protective publication program or
similar disclosure technique should not be taken lightly and must
consider various aspects. These include, but are not limited to,
market value, the state of the business, the potential to create
(or reduce) competitive advantage and how filing — or even
disclosure — would affect your other and future IP.
Published technical disclosures, used in conjunction with
patents, can strengthen an IP portfolio plus facilitate market
expansion simply by preempting the competition. Consult Dennemeyer’s patent law experts to discuss
the specifics of these tactics and how (and when) it is best to
implement them in your business plan.
The content of this article is intended to provide a general
guide to the subject issue. Specialist advice should be sought
about your specific circumstances.