Recently I had received a question from a reader of our blog, Mark Bertrand. Mark is a student at Harvard University and a newly minted entrepreneur whose business has intellectual property (IP). His question specifically concerns defensive publication. Here is Mark’s question:
“How much do you have to make priori art. Enough so someone can do reverse engineering? Or enough to show you invented first?”
Duncan Bucknell – an intellectual property (IP) attorney and CEO of Think IP Strategy has commented on our blog in the past concerning IP strategy and more specifically defensive publication. Think IP Strategy is a global IP Strategy Firm with attorneys specializing in IP law.
Duncan has graciously agreed to address Mark’s question as a guest post on this blog.
Here is Duncan’s response:
“An alternative to patenting everything you can in your organisation, is to defensively publish some of your developments – to avoid other people from later patenting them and blocking your ability to use (or more importantly improve upon them).
The key here is that you want to provide public prior art that would invalidate any future patent filed covering your invention. So you need to focus on providing sufficient information so that someone who works in that area of technology (the ‘person having ordinary skill in the art’) can make the invention from scratch. If you can do that, you’ve provided enough.
There are, of course many complexities the more you look into this, but this is enough to give you a sense of where to head.
For further information see:
1. Wikipedia – Defensive Publication
2. United States Patent And Trademark Office (USPTO) – Abstracts, Abbreviatures, and Defensive Publications
3. United States Patent and Trademark Office (USPTO) – US Patent Full-Text Database Manual Search”
I would like to thank Duncan Bucknell for his willingness to volunteer his time and addressing this defensive publication question on our blog and thank Mark Bertrand for posing the initial question. For more information on defensive publication or IP Strategy check out the Think IP Strategy website.
Photo Credit: Flickr – Valerie Everett’s Photostream