Defensive publication

A defensive publication or blocking publication (English defensive publication or defensive disclosure ) is the deliberate publication of technical content or inventions to the creation of art as a strategy in intellectual property law. With a defensive publication, the invention will be known and therefore void their patentability or protection legal capacity due to lack of novelty. At the same time is increased by the extension of the prior art, the patent required " inventive step " on the other, obvious inventions.

A defensive publication can secure the permanent free use of an invention and is often targeted to protect our own freedom of action (English Freedom to Operate) used. In conjunction with other protective instruments such as the registration of patents or other intellectual property rights or confidentiality of trade secrets, the defensive publication forms an additional component of a holistic IP strategy.

Introduction

The defensive publication as a strategy in intellectual property rights, for example, used in

  • Small developments ( application for protection too costly ),
  • Innovations in "fast markets " ( patent process slower than development ),
  • Poor detectability of the alleged violation ( enforcement of protection was costly ),
  • Or if the enforcement of exclusive rights is not intended from the outset.

A defensive publication offers the advantage that it secures with relatively little expenditure of resources, the rights to use of their own invention. The fast process and low cost are particularly against the often very complex process of registration of patents and other intellectual property rights. However, it is dispensed to the implementation of a defensive publication on the enforcement of exclusive rights and thus no license or other intellectual property rights revenues are expected. The application range of defensive publication is therefore often where on the one hand, the enforcement of a patent is difficult or cost-benefit ratio unfavorably and on the other hand, secrecy is not permanently ensured.

Defensive publications are also regarded as a suitable means against so-called patent trolls. To this end, such individuals and companies are counted in general, exploit the patents through licensing or enforce over patent infringement, without themselves being the inventor of the Work or to use it. In many cases it is legally dubious patents on already known or seemingly trivial technologies. By a suitable defensive publication can be prevented that such patents are granted.

Furthermore, defensive publications are also interesting for users who do not seek patents or confidentiality of their inventions, but want to put this on the contrary, the public permanently for free use are available. Research institutions, public bodies and the open source movement are examples of such users.

Another example of defensive publications is the assurance of traditional knowledge of different cultures in specially set up databases, such as the Traditional Knowledge Digital Library for documentation of Indian systems of medicine Ayurveda, Unani, Siddha and Yoga. With such databases respond countries such as India on the patenting of genetic resources and knowledge that are in certain cultures for centuries as common property ( biopiracy ). Until now, the traditional use was poorly detected because traditional knowledge is passed on orally, in many cases, and was especially patent offices do not or insufficiently accessible. The newly created databases to fill this gap and facilitate in particular the patent examiners access to this knowledge. There also exist a commercial database such as IP.com, Prior Art Publishing or Research Disclosure, companies and individuals for a fee the implementation of defensive publications offer.

Legal framework

Patent law

The mode of action of defensive publications resulting indirectly from the legislation, international agreements and case law on the registration of patents and other intellectual property rights. In Germany calls the Patent Act as a prerequisite for the patentability of an invention that it is new, involves an inventive step and is industrially applicable ( § 1 para 1 of the Patent Law ). The decision as to whether something is 'new' and thus worthy of protection is determined by the concept art. This includes all the skills that have been made ​​available to the public by written or oral description, by use or in any other way ( § 3 para 1 of the Patent Law ). In examining the novelty it is not permissible to combine separate items of prior art together.

In addition, the defensive publication has an impact on the patentability of later, similar inventions. These inventions are no longer considered patentable if they have no inventive step when compared with the prior art, ie become apparent to those skilled in the art in an obvious manner from the prior art ( § 4 of the Patent Law ). Here, the level of invention harmfulness does not result solely from the defensive publication, but from the combination of defensive publication with the rest of the art ( so-called mosaic comparison). In summary: A defensive publication extends the state of the art and thus causes:

Advertising Law

Many inventions created in the course of employment and must be treated in Germany as so-called service inventions according to the Employee Invention Act ( ArbNErfG ). The ArbNErfG to ensure a balance of interests between the employer and the employee and require the employee to an immediate message to the service invention (§ 5 ArbnErfG ) and the employer to use or release of the invention (§ 6, § 7, § 8 ArbnErfG ). The possibility of implementing a defensive publication is not explicitly mentioned in ArbNErfG, but is recognized according to use. § 13 paragraph 2 after the employee's consent possible.

It is widely used in practice that employers with the inventor of the payment of a fixed sum to cover all compensation claims and legal obligations Formal agree ( incentive system ). Thus, given a legally sound basis for carrying out a defensive publication. In determining the inventor's compensation for a defensive publication can be orientated on the exploitation of inventions in blocking patents.

International validity

Is based on the International Validity of a defensive publication, various national patent laws, international conventions and the relevant national case law in the various countries. Here are the patent as "novelty " and " state of the art " a central role. However, these terms are defined differently in part in the various legal texts. So true, for example in U.S. patent law is a relative concept of novelty and in the European legal system, an absolute definition of novelty (see also Table ).

In some countries also applies a so-called grace period, despite the publication of own idea allows the inventor a patent application within that period. In Germany there is no grace period for patents. However, there is utility models a grace period of six months. The following table illustrates the essential relevant for defensive publications differences of the patent law systems in Europe, the USA and Japan - the three regions of the world with the strongest patent activities:

Types of Schemes

Generally, there are no legal regulations, as the implementation of effective defensive publications to be made accurately. Only in the USA there is also an official form for the submission of defensive publications (SIR; Statutory Invention Registration ). Thus, a revelation at a later date is actually effective as a defensive publication, the following points are essential:

  • Uniqueness of the publication date,
  • Evidence that the content has not been changed subsequently,
  • Sufficient description of the invention, from which opens up its structure and its operation for a professional, or are described in all the relevant details.

Some common forms of publication and their characteristics are listed in the following table:

  • Good provable Date
  • A detailed description of the invention it is possible
  • Searchability is adjustable, depending on the selected medium ( for example, a high-impact journal or a small provincial newspaper )
  • A detailed description of the invention it is possible
  • Searchability is adjustable, depending on the selected medium ( for example, a well-known database provider or time-limited release on your own website )
  • Detectability is controversial. However, this can be ensured by clear procedures, such as time stamping and digital signatures.
  • Good provable Date
  • A detailed description of the invention
  • Good searchability
  • Formal requirements are high
  • Poor searchability
  • No international validity as prior art
  • Technical details are difficult to detect
  • Of prior use can possibly be asserted

Depending on the desired effect, it may be useful to publish such a way that the publication widely used and well researched is to prevent in advance, for example, competitors of it to register a property right to the disclosed technical teaching. A wide distribution also provides patent examiners the opportunity to gain knowledge of the publication. However, it can also be strategically desired, "hidden" as possible to publish in order not to reveal or internal knowledge competitors only effort. This strategy combines to some extent the advantages of secrecy with the protection by a defensive publication. However, if his defensive publication so hidden that it is found by anyone, runs the risk that its publication is not admitted to be prior art and thus is worthless.

As a public announcement of an invention destroys their patentability, the use of defensive publication should be well thought out and strategically carried out specifically.

Application Examples

Example 1: Protection law granting unlikely

A company develops a technology and seeking to protect these through the strongest possible protection law (eg, a patent). Research, however, reveals that it is highly unlikely that this target patent is granted by the patent offices. This can have several reasons. For example, there is already a lot of state of the art in this area and it is unclear whether the invention enough has " inventive step " over the state of the art, or the technology falls into areas that are not or only under very specific conditions patentable (eg software, biotechnology, medical procedures, etc.). Now there are very large expenditures for the registration of a patent very low chances of success against. There is, however, not completely exclude the possibility that patenting is possible a defensive publication prevents the idea in any case before Isenbruck.

Example 2: Border ideas / developments

In a highly competitive market a company holds a strategically important patent. Competition and general research activities will inevitably mean that smaller improvements and changes to the protected by the patent technology to be invented. Such offer competitors the chance to patents that are very close to the content of your patent to login. However, an own patenting every little further (often, especially for small companies in the case ) is beyond the company's financial framework. In order to strengthen the strategic patent and to keep it from being " encircled " by foreign patent or " punctured ", it can be useful to protect the minor improvements by defensive publications.

Example 3: Protection against obvious patent applications

After filing a patent, the documents will be held for 18 months by the Patent Office under lock and then published. A patent provides protection from filing prior to grant foreign patent applications patent " not new " are compared to the earlier application. In the new test, a 1:1 comparison of two fonts takes place, ie other patent applications may not only be issued if all aspects of the foreign registration of the earlier application emerge. The issue of " obvious " patent applications is still possible until the disclosure of the earlier patent. When testing for obvious inventions called a mosaic test is carried out, ie more fonts are considered and the invention is not to a person skilled arise from the combination of the content. Parallel implementation of a defensive publication after filing a patent application protects nearby foreign patents.

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