Defensive Disclosures: Statutory Invention Registration

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Publishing the details of an invention legally transforms the invention into prior art, which in turn precludes others from obtaining a patent on it. A defensive disclosure consists of publishing a description of an invention in the Official Gazette or another publication that is likely to be noticed by the U.S. Patent and Trademark Office, prior to a patent being issued.

A defensive disclosure is often used after an inventor files a patent application and decides not to pursue it further but also doesn’t want a subsequent filer of an application on the same or similar invention to have monopoly rights. Defensive disclosures are also used by companies that don’t think a particular area of technology (such as software) should be subject to the patent laws and therefore disclose their technology to prevent others from patenting it and extracting royalties.

There are two basic approaches to making a defensive disclosure: a Statutory Invention Registration procedure offered by the USPTO and a preemptive private publication. The USPTO procedure is much more expensive than the private approach.

To publish defensively under the Statutory Invention Registration program, an inventor can file a document with the USPTO that:

  • requests that the USPTO publish the patent application’s abstract in the Official Gazette
  • formally abandons the patent application, and
  • authorizes the USPTO to open the patent application to public inspection.

Example: Lou Swift invents a new form of portable energy source that allows most residential users of electricity to disconnect from the common electrical grid. After Lou applies for a patent, she comes to believe that the cause of peace and freedom would best be served by the invention being placed in the public domain, therefore becoming unpatentable. She utilizes the procedures described above to turn her application into a prior art reference that precludes anybody else from obtaining a patent on her invention. (This example is based on a theme developed in Ecotopia Emerging, by Ernest Callenbach.)

The private and less-expensive approach to making a defensive disclosure is to publish the invention in journals published just for this purpose, such as International Technical Disclosure and Research Disclosure. Also, the Software Patent Institute (www.spi.org) provides a defensive disclosure program for software-based inventions.

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