Defensive Publication

Patents are expensive, an applicant starts incurring costs even before filing a patent and continuously incurs costs throughout the life-cycle of the patent. The fees in some cases increase as the time passes – for example, the maintenance fee for maintaining a US patent are higher towards the end of life of the patent. Even before grant, there is filing fees, various attorney costs involved during patent prosecution such as filing office action responses etc.

Not all the inventions make business sense, and consequently may not be worth spending a lot of money involved in filing and prosecuting a patent. Corporations are constantly faced with the question of optimizing the IP expenditure and one of the ways that has evolved is – only protecting the innovation which matches the business objectives of the company and has a potential to provide a good Return on Investment. However, dropping such an idea without filing has consequences. With most of the patent laws favoring “First-to-file” system, if someone else comes up with the very same idea and files a patent for the same, he could stop the company who invented the idea and had decided to not file a patent for the same from incorporating the idea into the products.Therefore, many corporations who do not wish to protect an innovation publish a written description of the invention, i.e. a defensive disclosure so that no one can get a patent for the same and the company remains free to practice the invention if need be at a later stage. Such a disclosure is called a defensive publication. Not to mention that a defensive publication needs to be a properly drafted version of the invention, i.e. including all the possible embodiments, otherwise there is a chance that another applicant may be able to get a patent for a narrower version of the invention.Effectual Services has a team of experienced drafters who have drafted hundreds of Defensive publication documents for various corporations to be published on databases like IP.comTM, Statutory Invention Registration (SIRs) for filing with USPTO (pre-AIA stage). The team consists of Engineers, Bachelors, Masters and PhDs from varied technical backgrounds, including Computer Science and Information Technology, Electronics and Communications, Electrical, Mechanical, Chemical, Biotechnology, Pharmaceuticals and Life Sciences domain. Many of our team members have a Law degree in addition to the technical degrees making them ideal for Intellectual Property related services.