Tuesday, December 09, 2008

Defensive publications

SecuringInnovation has the following quote from iProperty:

Options for defensive publications range from traditional peer-reviewed journals to dot-com sites dedicated to online publishing. Publication in peer-reviewed journals is desirable, because such publications are important to the advancement of a scientific career, and the critical review such publications afford is important for the advancement of science. Moreover, the traditional requirement of repeatablility in peer-reviewed publications parallels the enablement requirement, helping to ensure that the latter is satisfied. The difficulty with traditional journal publications is that, assuming that they actually agree to publish your submitted article, they can take months to publish, and speed is critical to a defensive publication strategy. If another company files a patent application before the defensive publication becomes public, then the strategy is defeated.
A tempting forum for defensive publishing is the company Web site. However, most standard Web site publishing does not include a method for verifying the date of publication or the authenticity of the publication. Additionally, the content of Web sites is constantly changing, and Web-based searching is still not as accurate as traditional information databases. The world's patent examiners may not identify the publication. If this happens, the competitor's patent application could be examined and granted without knowledge of the defensive publication, and the publication would therefore not have its indended effect (i.e., use by a patent examiner as the basis for rejecting a competitor's patent application).

It should be noted that ideas described in patents but not claimed are also considered published subject matter and are dedicated to the public. [IPBiz: Johnson & Johnston] One publication option is to describe the ideas to be published in a patent application without submitting claims that protect the ideas. This option has the advantage that if, during the pendency of the application, the applicant decides to elect to patent the ideas rather than publish them, the applicant may have the option to submit claims covering the ideas. In other words, publishing ideas in a patent application can be a way to defer the finality of a decision between patenting and publishing.

Another option for defensive publishing is IP.com. This savvy Internet-based company, founded in 2000, has created a prior art database that provides a quick and effective way to put defensive publications in the hands of the public. The company has a wide variety of clients, including IBM, Genereal Electric, Motorola, Abbott Laboratories, and Eastman Koday. IP.com electronically date stamps and protects the integrity of each defensive publication to ensure that its publications have legal significance for the world's patent systems. Documents published by IP.com become part of a text-searchable database, accessible to patent examiners in the world's patent ofices. The disclosures also are published monthly in the IP.com Journal to ensure compliance with accepted legal standards. The journal is housed in 35 libraries and patent offices around the world.

IPBiz notes that there are a number of electronic journals and electronic counterparts of paper journals. Getting information out is not a big deal. Also, once a patent application is published, the 102(b) clock starts to run (in addition to 102(e) issues).

IPBiz went to IP.com and submitted a search using the keyword "fullerene." There were 23 hits, of which five were displayed, with the message:

NOTE: You are searching without a search subscription. The number of results are limited to a maximum of 5 records. To see more results and an unrestricted preview of the documents, first register then purchase a search subscription.

The text for the first hit was limited to

Disclosed is a class of novel magnetic microstructures consisting of a fullerene molecule with a coating of a magnetic metal. The fullerene molecule, for example, C60, is used as a nucleation center for the growth of the magnetic metal. This produces magnetic particles of...

On the USPTO published application database, on Dec. 9, the keyword fullerene produced 3025 hits. Note US 20050130551 on "Microstructures."

**Separately**, on the subject of defensive publications, Brett Broesder noted:

With Senate Judiciary Committee Chairman Leahy (D-VT) recently asserting that patent reform will be at the top of the committee’s legislative agenda in 2009, Congress will continue debating how to reform a broken patent policy in the 111th Congress. On the private sector side, Open Invention Network (OIN), an intellectual property company founded to promote Linux, is leading an ambitious effort to spur technological innovation by focusing on patents.

To further this effort, OIN is ready to announce the following program:

The launch of a defensive publication program, with New York Law School and the Linux Foundation, to reduce the number of patents that threaten Linux and open-source development by making prior art more readily accessible to patent and trademark office examiners. [IPBiz: should OIN be getting together with IP.com?]

To discuss this innovative program launch, Keith Bergelt, the Chief Executive Officer of OIN, is available to chat by phone on Tuesday, December 9.

Also, you can find more information about OIN, which has the backing of several major partners, including IBM, Novell, Philips, NEC, Sony and Red Hat, at www.openinventionnetwork.com.

Additionally: Below is the official press release regarding the “Linux Defenders” program launch.

As a caveat, IPBiz does not think we have a "broken patent policy" or that patent reform will be at the TOP of anyone's priority list during the meltdown of the economy.


Michael Sullivan's IPLawOutline.

Note, for example, in discussing Medegen MMS, Inc. v. ICU Medical, Inc., the outline alludes to Liebel-Flarscheim: However, if the dissenting Judge Walker is correct based on the district court’s findings that the claimed invention would not work without the plug having “the elastomeric and buckling or pivoting limitations,” or that these features were otherwise essential to the invention, the present case is no different than the Liebel-Flarsheim cases.

For an endorsement, check out facebook wherein Kara wrote at 10:51pm on November 17th, 2008:

Looking for Intellectual Property (patent) information relevant to your own product/business? Check out my husband's website: www.iplawoutline.com for a comprehensive outline and analysis of all Federal Circuit cases issued since 2003. Or join my facebook group, "Sullivan's IP Law Outline"


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