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."