Defensive Publication - Patexia IP Matters Webinar

Defensive PublicationsOpen Invention Network

Linux Defenders Program

Article 1 Section 8 Clause 8

"...Promote the progress of Science and useful Arts by securing for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. "

Overall Patent Allowances

Software patent grantsBeginning with those granted pre-1991

Number of lawsuits filings involving software patents

Role of patent examiner

● Determine whether applications comply with the basic format, rules and legal requirements

● Determine the scope of the invention● Search for prior art● Issue office actions

Over the life of the application, the patent examiner spends 20 maximum hours doing all of the above

Peer To Patent First Pilot: Final Results

Challenges the Examiner Faces

After all is said and done, the patent examiner only gets 7-8 hours to determine whether an application is worthy of a 20 year monopoly.

Challenges:● Patent Backlog● Patent Legalise● Limited access to non-patent literature

Examples of prior art not typically searched by the patent office

● Scientific Publications● Technical Reports (universities, companies)● Conference proceedings (scientific/ non-

scientific)● Conference talks● Blog posts● Mailing list archives● Usenet posts● ...

Lawsuits filed by Non-Practicing Entities

RPX Corporation

Limiting and Removing the Patent Threat

There are three points in time where we can interfere:1. Before a patent claim is submitted by an entity: Defensive Publication2. During a patent examination: Pre-Grant Submissions.3. Trying to invalidate a patent after it has been issued: Post issue

Innovation Options

1) Patent everything you create

2) Ignore patents and cross your fingers that no one sues

3) Actively protect your work

What is a Defensive Publication?

A publication that serves as explicit prior art and ensures freedom to operate around your design.

● They are a powerful way to prevent bad software patents from getting issued.

● Give the patent examiner insight as to the state of technology.

Healthy Innovation

Defensive Publications allow us to disrupt the balance of the construct of the patent system

Approach: Patents are awarded if New and Not Obvious

● If there is no prior art then the patent will be awarded.

Creating prior art destroys the possibility for the claimed invention to be patented.

How to write a defensive publication?

Writing a defensive publication is simple:● Title● One to two pages of text (at minimum)

describing HOW the idea works:○ Introduction○ A description of what is currently available and of

your idea○ The steps involved

● A figure describing the interaction between components

Most important is explaining HOW this would work.

Example of a defensive publication

Who writes Defensive Publications?Many entities publish defensive publications:IBMThe Internet Society (namely the IETF's Requests for Comments)CiscoMicrosoftLenovoNISTMotorolaSiemensNokiaSonyXeroxIndividuals

When to write a defensive publication?

● Whenever you come up with an idea that makes you enthusiastic

● It does not matter if you implemented or not

If you want to blog about it and tell your friends in the middle of the night about your idea, that is the right time.

How is Linux Defenders Involved?

Submitting defensive publications through Linux Defenders ensures that the patent examiner will gain access to these.Process:● Submit on linuxdefenders.org● Each defensive publication gets posted on

IP.com● IP.com is a digital notary● Patent examiners use IP.com when

conducting prior art searches.

Questions? Contact me!

acasillas@openinventionnetwork.com

Thank you!

References

RPX Corporation, Tracking Patent Activity: A Post Script to the DOJ Report (March 2013)http://www.rpxcorp.com/index.cfm?pageid=14&itemid=29

Peer To Patent, First Pilot: Final Results (2012).http://dl.dropbox.com/u/2541719/First%20Pilot%20Final%20Results.pdf