Have No Publication Strategy (no. 8 in our list of IP mistakes)
To publish or not to publish is not always a choice but an obligation. Unless you fulfill it, it will not give you what you wanted to achieve. Imagine you have a new invention. Someone else also has a similar invention to yours with very few modifications/additions. The later invention could be deemed inventive and it may limit your freedom of operation unless you protect and publish your invention.
Imagine another situation where you have a new invention and in the excitement you have accidently disclosed it to the public without giving thought to protecting the same and the opportunity is lost forever.
Any remark, advertisement, interview or statement published may go against plans to protect your IP. Disclosure of your invention pipeline may prove beneficial to you competitors. Some areas where you might want to be vigilant include:
1. Finalizing patent specifications
2. Anything intended to create “Freedom to operate” (FTO)
3. Communications for shareholders
4. Providing briefing to newspapers / TV channels
5. Displaying photos or videos on websites
Research and publication go hand in hand because unless research is published, it can neither be accepted nor debated. Publication is desirable when it takes place at the right time and for right purpose. Sound publication strategy will ensure that the risk of publishing or not publishing is minimized.
A publication strategy would encompass minimum 3 factors which are:
1. Purpose of publication
2. Category for data/research
3. Impact of publication
Purpose of publication
You may have several purposes for your publishing your data, research, or an invention. Publication strategy should provide a reason for any given publication. Your purpose might be to promote products and services for commercial benefits, to make defensive publication to secure FTO, to support and create FTO for the technical modifications having no or less patentability, to get collaborations, to earn reputation, to gather the support of stakeholders, or to catch the attention of competitors and patent offices.
Category for data / research
While designing a publication strategy, you must think of all possible data/information/research that may be required to be published or held secret. Thus publication strategy describes these categories under which your future data will fit. Categories will elaborate on various types of data / information or research generated within the organization.
Impact of publication
The strategy will take into account the impact of publishing or not publishing specific information generated with a specific purpose. Further, the strategy should provide how content, means and timings of publication produce different desired or undesired effects.
If you want to protect your invention(purpose of publication is protection of research/technology and category is patentable invention) the impact assessment must involve analysis of how and when the invention should be brought into the public domain to achieve the most desired results. Sound strategy may require review of the actual contents and assessment of the risk of narrower or broader disclosure.
Sometimes two inventors working independently on the same subject matter file patents in different countries around the same time. Publication of each one’s patent specification does not serve as prior art for the other. A closer look at the priority dates or development history reveals a lost opportunity for one of them to bar the other by effective publication.
It is a false assumption that only unpublished information requires a publication strategy. Sometimes even published information requires republication with addition of results, data or comments. Imagine a situation where you are trying to use prior art to develop a product. You may use the methods reported in the prior art and assume that you have developed the same product. You decide not to publish the results of your experiments. However someone else files a patent on this subject matter a little later trying to show that his subject matter is new and inventive. You find yourself spending time and money opposing his patent.
A publication strategy is required by many beyond inventors or innovative companies. For example even countries require a strategy to protect their traditional knowledge from being patented. Generation of the Traditional Knowledge Digital Library (TKDL) is one such example. In India, traditional knowledge of ways and means practised to treat diseases has generally been passed down by word of mouth from generation to generation or described in literature in a form that was either inaccessible or difficult to comprehend. This led to the grant and subsequent revocation of some patents due to lack of a proper public platform for inventors and patent offices outside India to access this information. Finally the Traditional Knowledge Digital Library came into existence which documents the traditional knowledge available in the public domain in the form of existing literature related to Ayurveda, Unani, Siddha and Yoga in digitized format in five international languages and now available to various patent offices.
Once a sound publication strategy is in place, you can focus on further details such as working on specific publication means, review and form and format of content, and timing.
(This is number 8 in our list of IP mistakes and how to avoid them.)
Image credit: DBduo Photography
One Comment on “Have No Publication Strategy (no. 8 in our list of IP mistakes)”
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Excellent article covering the risks of accidental disclosure and introducing benefits of a purposeful defensive publication strategy.
The following paragraph particularly interested me :
“Sometimes two inventors working independently on the same subject matter file patents in different countries around the same time. Publication of each one’s patent specification does not serve as prior art for the other. A closer look at the priority dates or development history reveals a lost opportunity for one of them to bar the other by effective publication.”
This helps explains an increasing trend for early publication of patent applications as defensive publications. Would you be able to point me to any examples of two (or more!) patent applications on overlapping subject matter that would lead to the situation you have described above?