The Obviousness of Patent Alternatives

Throughout the global economy, a hotly contested patent race is underway. It might be due to the rapid emergence of countries like Taiwan, India, and China as innovation and economic powerhouses. It may be a result of software and so-called business method patents, which stormed onto the scene in the late 90s. It might be because of a long overdue appreciation of the power of patents. Or, it's simply an appropriate alignment of the planets in our solar system.

Whatever the reason, since 2000, patent applications have been filed at breakneck speed. And issued patents can be deadly. As the race continues, companies 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 more than $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.

So, how do you prevent competitors from obtaining patents that could block you from using your own innovative ideas in products and services?

One answer is to join the patent race. If that's your answer, be prepared to spend, spend, spend. Average legal fees to file one patent application in the United States are in the range of $12,000-$15,000. Multiply that by three or four to file applications in several key locations throughout the world. Then add more than $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 10 times.

To compound the 'cost of getting a patent' problem, consider the recent Supreme Court ruling in KSR Int'l v. Teleflex, Inc. relating to an overwhelmingly important concept called 'obviousness.' Without getting into all the gory details of that term, this case has essentially made it harder to get patents and harder to enforce already issued patents. This means the patent acquisition cost has gone up, and the 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 the current environment, trade secrets might not be realistic. 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.

What about defensive publications? Appropriately placed defensive publications can protect your freedom to practice without patenting. Well-placed defensive publications are valuable for two reasons: first, to support examiners in preventing overly broad competitive patents from issuing; and second, in cases where overly broad patents have issued, to be available and admissible years later to form the basis for an invalidity defense in a patent case.

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 could be used by examiners to reject patent applications are generally not even found.

The first reaction some have when considering these issues is to defensively publish everything. However, caution is advised. Defensive publications can be a double-edged sword. If placed in the right prior art database, they can be a powerful weapon for destroying competitive patents. But, they can also be a powerful weapon 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 ' just not published in a place patent examiners are likely to look.

Product Descriptions

Product descriptions could be a great source for prior art to support final rejections of overly broad competitive patent applications. The problem for the examiners is finding them. There are product descriptions in every store in the world, and these days on every company Web site, but examiners don't have time to go to every store or search every Web site when prosecuting a patent application. The reality is that examiners only have a few hours to do a full prior art search for each patent application. When considering the world of prior art, a few hours are 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 obviously '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? Well, this is where the brain work comes in. This is where a process comes in ' a publication clearance process.

Publication Clearance System: Publication Clearance is becoming increasingly 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 lead 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.

Another decision is critical in the IRC process. IRCs need to ask a second 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, those rejected disclosures can be used to prevent or defeat competitive patents throughout the world. Indeed, one invention disclosure can defeat patents worldwide.

Thomas J. Colson is President and CEO of IP.com. Colson is a registered patent attorney with extensive experience in both prosecution and litigation. In his current role, Colson guides the development of enterprise-wide innovation management solutions, including Web-based and desktop solutions that facilitate rapid and reliable publication of technical disclosures and the protection of electronic records. He can be reached at 716-362-4562, ext. 110 or [email protected].

Throughout the global economy, a hotly contested patent race is underway. It might be due to the rapid emergence of countries like Taiwan, India, and China as innovation and economic powerhouses. It may be a result of software and so-called business method patents, which stormed onto the scene in the late 90s. It might be because of a long overdue appreciation of the power of patents. Or, it's simply an appropriate alignment of the planets in our solar system.

Whatever the reason, since 2000, patent applications have been filed at breakneck speed. And issued patents can be deadly. As the race continues, companies 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 more than $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.

So, how do you prevent competitors from obtaining patents that could block you from using your own innovative ideas in products and services?

One answer is to join the patent race. If that's your answer, be prepared to spend, spend, spend. Average legal fees to file one patent application in the United States are in the range of $12,000-$15,000. Multiply that by three or four to file applications in several key locations throughout the world. Then add more than $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 10 times.

To compound the 'cost of getting a patent' problem, consider the recent Supreme Court ruling in KSR Int'l v. Teleflex, Inc. relating to an overwhelmingly important concept called 'obviousness.' Without getting into all the gory details of that term, this case has essentially made it harder to get patents and harder to enforce already issued patents. This means the patent acquisition cost has gone up, and the 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 the current environment, trade secrets might not be realistic. 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.

What about defensive publications? Appropriately placed defensive publications can protect your freedom to practice without patenting. Well-placed defensive publications are valuable for two reasons: first, to support examiners in preventing overly broad competitive patents from issuing; and second, in cases where overly broad patents have issued, to be available and admissible years later to form the basis for an invalidity defense in a patent case.

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 could be used by examiners to reject patent applications are generally not even found.

The first reaction some have when considering these issues is to defensively publish everything. However, caution is advised. Defensive publications can be a double-edged sword. If placed in the right prior art database, they can be a powerful weapon for destroying competitive patents. But, they can also be a powerful weapon 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 ' just not published in a place patent examiners are likely to look.

Product Descriptions

Product descriptions could be a great source for prior art to support final rejections of overly broad competitive patent applications. The problem for the examiners is finding them. There are product descriptions in every store in the world, and these days on every company Web site, but examiners don't have time to go to every store or search every Web site when prosecuting a patent application. The reality is that examiners only have a few hours to do a full prior art search for each patent application. When considering the world of prior art, a few hours are 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 obviously '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? Well, this is where the brain work comes in. This is where a process comes in ' a publication clearance process.

Publication Clearance System: Publication Clearance is becoming increasingly 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 lead 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.

Another decision is critical in the IRC process. IRCs need to ask a second 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, those rejected disclosures can be used to prevent or defeat competitive patents throughout the world. Indeed, one invention disclosure can defeat patents worldwide.

Thomas J. Colson is President and CEO of IP.com. Colson is a registered patent attorney with extensive experience in both prosecution and litigation. In his current role, Colson guides the development of enterprise-wide innovation management solutions, including Web-based and desktop solutions that facilitate rapid and reliable publication of technical disclosures and the protection of electronic records. He can be reached at 716-362-4562, ext. 110 or [email protected].