Richard Poynder
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On the defensive about invention

By RICHARD POYNDER

25th September 2001

Recent years have seen a dramatic rise in the number of patent applications. But as the costs of patents - and patent litigation - rise, many companies are starting to question the value of blanket patenting.

Even highly patent-conscious companies such as Motorola, which regularly features in the US patenting top 10, are reassessing their strategies. "Motorola has over 1,000 US patents granted each year," says Helen Young, a project manager in the company's law department. "But we are now looking hard at what we have patented and asking: 'was it really worth the time, effort and cost to patent in all these cases? If not, should we only patent what we consider good-quality top-of-the-line technologies?' "

However, not patenting is risky as it opens up the possibility of a competitor patenting your invention and demanding licensing fees. Worse, you might be prevented from entering a market that you had created.

To avoid this, companies are increasingly adopting "defensive publishing" strategies. That is, by publishing information about their invention they create "prior art" to disqualify anyone else from patenting it, on the grounds that once details of an invention are made public it is no longer novel, and so cannot be patented.

"As our philosophy changes," says Ms Young, "I can see that in coming years Motorola will probably want to publish more and patent less."

The most obvious way to disclose an invention is to publish an article describing it. This, however, can take months. Moreover, the patent office may not be aware of the article. So a patent could still be issued to a competitor, leaving you with the expensive task of challenging its validity in the courts.

Specialist journals such as Research Disclosure are now available to overcome these problems. "The way it works is that if you send me a disclosure today you can be sure it will be in the public domain and on the desks of all patent offices within 20 days," says Piers Mason, at Kenneth Mason Publications, which publishes Research Disclosure.

More than 1,000 companies use Research Disclosure, which publishes about 400 disclosures a month. Web-based services such as IP.com have also been launched.

As patenting strategies become more sophisticated, so the value of defensive publishing increases. It can, for instance, protect against picket-fencing - where competitors patent small incremental improvements in your patent in order to erode its value and enable them to license your technology on preferential terms.

In 1982, for instance, International Business Machines was granted a US patent for the scanning tunnelling microscope (STM) capable of imaging atomic details as small as 1/25th the diameter of a typical atom.

At first IBM dominated the STM field. By 1989, however, it had been picket-fenced by competitors.

"If IBM had published disclosures of all of the incremental innovation around their pioneering technology, they could have prevented others from picket-fencing them," says Tom Colson at IP.com. "They would, in effect, have taken full control of the technology without putting patent resources at risk."

Such blocking tactics can also be achieved by patenting the incremental improvements, but defensive publishing is significantly cheaper. "It costs $109 ( £75) per document to publish on IP.com," says Mr Colson. "This compares very favourably with the $20,000 it costs per patent application to file in key locations worldwide."

What companies forfeit by not patenting, of course, are potential royalties. For this reason, says Tamara Quinn, an intellectual property barrister at Berwin Leighton Paisner, the London law firm, deciding which inventions to publish and which to patent is difficult. "It can be very, very difficult for a company to tell at an early stage whether it has got something of real value."

Historically, defensive publishing has primarily been undertaken to support and strengthen patenting activities. But some now see a more seditious role for it.

Those - such as the open-source software community - who oppose the trend for patenting software, for instance, believe defensive publishing should be used to subvert the patent system.

Since software patents have only been granted in recent years many inventions have never been documented, so patents are being granted today on innovations that are not novel but for which patent offices cannot find prior art. Patent sceptics argue that by assembling databases of these "invisible" inventions and including new inventions, the patenting of software can be stemmed.

"The potential long-term accomplishment would be to make it so difficult to find something that was patentable and that had not already been published as prior art, it would become impossible to patent in this area," says Brian Cabral, chief executive of Kaivo, which provides services to open-source developers. With this in mind, US-based Foresight Institute last year linked up with IP.com to create Priorart.org, a web-based software prior-art database.

Those opposed to the patenting of genetic resources, including seeds and parts of plants, are also exploring the possibility of building prior-art databases.

"Some argue that we should be defensively publishing traditional knowledge," says Victoria Henson-Apollonio, a senior research officer at CGIAR, an international not-for-profit agricultural research organisation. "In other words, we should build a database of all known traditional knowledge or innovation in order to create prior art that would exclude anyone from patenting it."

There are fears, however, that doing so could prove counterproductive. "A lot of fortune-seekers will gather around any defensive-publishing database in order to see what ideas may be patent-relevant and then find complementary ideas that they can patent themselves," warns Hartmut Pilch, a spokesman for the European-based open-source group, Eurolinux.

In any case, patent offices would not have time to search them, says Jeremy Phillpott, marketing executive at the UK Patent Office.

Nevertheless, John Cronin, former head of IBM's IP asset management group, believes the growing dispute between developed and non-developed nations over IP rights could become focused on defensive publishing. "Suppose," he says, "that India and China decided that patenting was too expensive and began to publish in volume on the web. The patent system could be effectively dismantled."

Certainly there would be a significant fall in licensing revenues for IP-rich companies like IBM, General Electric and Motorola, he adds. "Today IBM earns $1.7bn a year from licensing. What would be the consequences if, four years from now, there were a 95-99 per cent reduction in the number of patents it could get?"

An unlikely scenario, perhaps, but one that underlines the disruptive potential of defensive publishing. What is certain, says Mason, is that defensive publishing is set to grow rapidly. "I'm expecting a steady 40 per cent annual growth for Research Disclosure over the next few years."

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