IPR GROUP observation of IP practice. Digest # 06, 2015

Mr. Paul Rosenich,

European Patent Attorney, Patent and Trademark Attorney (WIPO, CH, LI), IP-Mediator (WIPO, CH) CEO of Patentbüro Paul Rosenich AG


Defensive Publication – an Indispensable Tool for IP-Managers

IP-Managers do often consider if IP-protection is the only “true way” of satisfying the needs of their companies. It is correct, that IP-protection for Patents, Designs and Trademarks are useful to improve the position of companies in the market. However, those IP-rights provide only a right to stop others doing businesses in the protected areas. These rights – at least from their filing days do not protect the companies from being attacked by foreign IP-rights. That means that IP-rights can only be used for a defense against competitors in a limited manner. Here Defensive Publications fill an important gap and at the same time ensure that inventors/creators will not be taken by surprise through late comers in the same field.

Defensive Publication, as a special form of protection against others rights in intellectual property. With respect to the subject of publication, it is should be noted that any information can be published unless it is prohibited by the legislation (e.g. developments in weapons or the like).

Defensive application is used to defeat the novelty or inventive step of a subsequent patent or utility model or design application. In other words the competitors will have no possibility to obtain an IP right for the subject matter for which the defensive publication was made since all data mentioned in the publication become state-of-the-art by publication. State-of-the-art however can be used in attacking IP-applications of Competitors who filed them after the publication was made.

Relevant points of Law (EPC as example)
To understand the grounds of possibility to use the defensive publication we should revert to the European Patent Convention, namely to Articles related to novelty and invention step.

Article 54[ 42 ], [ 43 ]
(1) An invention shall be considered to be new if it does not form part of the state of the art.
(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

(3) Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.

Article 56[ 46 ]
Inventive step
An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.

Therefore, earlier defensive publication of inventors/creators might stop later filed patents, utility models or designs of competitors, without harm to inventors/creators earlier filings of IP-applications.

It is worth noting, that the secret application process of a patent e.g. usually takes several months at least and without acceleration it lasts for 18 months after filing or priority. Taking into account the fact that inventions are made more and more in parallel and considering costs involved for patent examination and R&D, defensive publications becomes more and more attractive. Those who are earlier in filing of IP-applications and/or publishing get a clear advantage over the competitors who are a bit later with their respective actions.

Relevant points of Business interest
Modern business definitely relies on the R&D which is a part of successful development. However, R&D is also a risky financing area since the development of inventions and their realization carries uncertainty factors including the profitability of the invention.
The IPR’s (IP-rights) will be relevant only in the case of costs incurred to the invention are bigger than costs incurred to the imitations and replication of said invention. In this regard the following is equitable:

–           if costs for copying of a new solution are smaller than R&D of the same solution, then the party bearing the R&D-costs has a problem in view of return of investment (no ROI);
–           if costs for R&D of a new solution are significant and another party gets patent protection, then the party bearing the R&D costs has a problem (lost R&D costs);
–           if costs for R&D of a new solutions are significant and other party can copy freely, then the party bearing the R&D-costs has a problem (R&D costs in price calculation)

It should be kept in mind that normally similar solutions appear at about the same time, however better solutions belongs to those patent filers who work longer on the R&D.
Further, one of the important things about defensive publications is the route to publication which should be defensive in the meaning that it should legally qualify as a publication but it should not be a mass-publication in order to not inform too many people at the same time.
Most of all existing publication platforms provide the security of the particular database or library which record the publication data and document it.
With respect to this, a European platform with the brand protegas® provides an additional certificate of publication and also issues a distinct publication number (like at an patent office) and a signed certificate (like a certified priority document of a patent office).

To sum up, modern world demands modern solutions in IP management and defensive publication helps to meet the requirements of innovative business process and to make business at a more reliable base. Defensive Publications are modern and useful insurance tools for IP inventors/creators.

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© 2015 All rights reserved.

Mr. Paul Rosenich,

European Patent Attorney, Patent and Trademark Attorney (WIPO, CH, LI), IP-Mediator (WIPO, CH) CEO

Mr. Paul Rosenich is a European attorney who has been in the position of the chairman of the Disciplinary Committee of the European Patent Institute (epi) which is the Chamber for European Patent Attorneys for more than ten years. He is President of the Board of the international IP law firm “Patent Bureau Paul Rosenich AG”.

On March 23, 2015 the International Institute of IP Management I3PM held the conference

“IP MANAGEMENT CHALLENGES IN OPEN INNOVATION ENVIRONMENTS” where Mr. Rosenich presented practical explanations about the useful IP-management tool “Defensive Publication”.

Has been working in the field of industrial property protection for more than 35 years:

• Patent and trademark departments of different industrial firms (electrical devices, tires and technical rubber products, ski bindings)

• Freelance patent researcher in Austria and Germany

• From 1987 to 1997 authorized officer at the patent office Büchel und Partner AG as well as Technolizenz AG

• From 1987 Swiss Patent and Trademark Attorney

• 1993 European qualifying examination

• 1995 admitted as Liechtenstein Patent and Trademark Attorney

• 1998 formation of Patentbureau Paul Rosenich AG (patent attorney’s office)

• Lectured in the area of intellectual property at technical colleges and universities in Switzerland, Liechtenstein, as well as for epi, EPA and FORUM Institute for Management and for the TUeV-Akademie

• Tutor for questions of law of the European Patent Convention at various universities including the CEIPI of Strasbourg University and at DIPOLI at Aalto University Helsinki

• From 2014 Foreign Guest Researcher at the Global Intellectual Property Business Magazine Guangzhou, China

• Chairman of the Disciplinary Committee at the European Patent Institute (epi)

• President of the Admissions Commission of UNION-IP and Delegate for Liechtenstein at the Executive Committee of UNION-IP 

http://iprgroup.info/files/Image/nop_pdf_downlaod.pngDefensive Publication – an Indispensable Tool for IP-Managers