Review on Defensive Publications and Statutory Invention Registration (SIR): Trends and Usefulness for Inventors
Krati Gupta1 and Harit Mohan1, 2
1Intellectual property division, Stellarix Consultancy Services Pvt. Ltd., India
2 email@example.com | (+91) 141-511-1443
In general, obtaining and maintaining patents is a form of risk management for a company. For example, a company that has failed to secure any patent protection may lose control over its core technology and vulnerable to law suit or other oppressive licensing terms.
As we all know obtaining and maintaining patents can represent a substantial portion of a company’s intellectual property budget so for those situations where the cost/benefit analysis indicates that the expense of patent protection is not justified, an alternative form of risk management should be sought.
2. Why, YES for Defensive publications and SIR and NO for Scientific Journals and Technical Bulletin?
Discloser of Invention
|Scientific journals do not contain sufficient technical information to make and use an invention without having to perform extensive experimentation will not prevent others from patenting the same invention.
|Technical disclosure bulletins are prepared for the purpose of disclosing technology to the public, thus preventing others from obtaining a patent on the same subject matter.|
|Reviewed by Patent attorney before publication||The journal article usually prepared by the inventor and generally not reviewed by a patent attorney or Patent and Trademark Office’s (PTO) and does not had any patentability tested in the prosecution process.
|The technical bulletins are generally prepared or reviewed by a patent attorney to guarantee and satisfies the disclosure requirements according to U.S. patent laws 35 U.S.C. § 112.|
|There is only publication date and scientific journal becomes an effective reference on the publication date.||There is no effective reference date as patent where effective reference date equal to its filing date even though the contents of the patent are not disclosed to the public until the patent is granted and published by the PTO in contrast technical disclosure bulletins become effective references on the publication date.
3. Defensive publications and were they actually better than research papers?
Few important things to know about defensive publications:
- Defensive publication is not a patent (see point 6).
- The Defensive Publication Program, which provided for the publication of the abstract of the technical disclosure of a pending application if the applicant waived his or her rights to an enforceable patent, was available in April 1968.
- At that time like utility or design patent it can prevent another party from obtaining a patent on a product, apparatus or method.
- At that time like utility or design patent it discloses an enabling description and/or drawing of the product, apparatus or method so that it enters the public domain and becomes prior art.
- In 1973 The Board of Appeals decided that the effective date of a defensive publication as a reference is the date upon which a document is published, not the filing date of the application. [Ref: Ex parte Osmond, Smith, and Waite]
- The court also stated that, “A Defensive Publication is not a patent. A Defensive Publication is in reality no more than a publication, and as such, cannot be effective to defeat another’s right to a patent prior to its publication date. The application forming the basis of the publication is not available to the public until the date of the publication of the abstract . . . . Therefore, there does not appear to be any legal foundation for making the publication retroactively effective to defeat another’s right to a patent.”
3.1 Inventor’s dilemma following court’s decision
This determination in effect gives the defensive publication the same status as a journal article or a technical disclosure bulletin. Conceivably an inventor could be in a worse position if it took longer to prosecute the application as a defensive publication in the Patent and trademark office than it would to get a journal article or a technical bulletin published; this is so because the publication date is the date the material becomes an effective reference to prevent others from patenting the same invention. Therefore, an inventor is left without an effective method of protecting his invention unless he wants to wait for the publication of technical disclosure bulletins, journal articles, or defensive publications, or spend the time and money to file a patent application and obtain a reference date as of the application filing date.
4. Stellarix research on prevalent trends when defensive publications were filled, until 1985
5. Statutory Invention Registration (SIR), the better solution to the inventor’s problem
- SIRs are not patents but give sufficient rights to its owner (see point 3 below).
- The Statutory Invention Registration replaced the U.S. defensive publication in 1985-86.
- Rights given by SIR: It offers a procedure for obtaining defensive protection for inventions by giving an inventor the same defensive rights as does a patent; other individuals are prevented from patenting the invention. SIR does not, however, allow an inventor to exclude others from making, using, or selling the invention. [Ref: 35 U.S.C. § 111]
- Statutory Invention Registration overcomes the problems with technical disclosure bulletins, journal articles, and PTO defensive publications, by providing an inventor with an abbreviated procedure for disclosing his invention to the public which gives the inventor a reference date equal to the filing date, not the publication date. [Ref: (37 C.F.R. § 1.53(b))]
- SIRs are prepared by a patent attorney in the same manner as a patent application.
- An applicant for an original patent may also request, at any time during the pending complete application, that the specification and drawings be published as a statutory invention registration (SIR).
- SIR establishes a prior art reference as the filing date. Subsequent inventors are prevented from patenting the same invention, and the subsequent inventor is forced to pay royalties to the patentee.
- Large corporations, universities and governmental agencies had great benefit from the new SIR program who wants to publish inventions that result from research but do not want to exploit the invention commercially, either because of policy or economics.
- SIR will serve as an expedient and inexpensive means to make inventions· public and prevent others from patenting the same or obviously similar invention on the other hand Government normally does not enforce its patents and will grant a license to anyone who requests it. In fact, the newly enacted SIR statute specifically contemplates the government’s use of the new statutory invention registration process.
6. Stellarix research on decreasing filling rates of SIRs, which replaced defensive publication in 1985-86
Both defensive publications and SIR were PTO’s attempt to help inventors who did not want to file a regular patent application but still wanted to enjoy some rights. While defensive publications were most prevalent in 1960-1980, it was stopped in 1985-86, following which it was replaced by SIR. While prevalent, defensive publication was used by companies like IBM, Imperial chemical company, London, Caterpillar and few more. Following introduction of SIRs, there was mark increased in filling during period of 1983-1986. However late 80’s and till recently the filling of SIRs have decreased consistently. During this time the top fillers were Government organisation such as US Army, Navy, Air Force and Energy departments and few companies such as Shell, Fuji and Caterpillar. The changing trend could be accounted to inventor’s inclination towards either easy method of publishing paper in journals and technical bulletins or rather going the tough but complete protection way i.e. by filling a utility patent application.