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Many commercial lawyers are looking at adding defensive publishing to the services they offer to clients that are active in product development and patent protection. This concept is now a global reality that is speeding and improving protection. Defensive publishing can be lucrative for IP-savvy law firms, yet significantly cut costs to clients, argues the CEO of IP.com, a company that has recently set up the world’s first global Web defensive publishing service. Commercial law has expanded so rapidly since the advent of globalization and e-business that company leaders increasingly look to their legal advisers to act almost as management consultants. As a result, lawyers need to continually evaluate the breadth of their service portfolio to ensure its suitability to the scope of the 21st century legal industry. One major growth area is patenting. The competitive advantages of patents are highly significant to corporations of all sizes, and the patent arena is particularly relevant to law firms advising high-tech and start-up companies. But seeking to patent every potential piece of intellectual property would be prohibitively costly, not to mention the expenses attendant to patent prosecution. Inventions have to be prioritized — which can leave new product and service lines dangerously exposed to the exploitation of competitors. Defensive disclosure provides an effective, economical alternative that protects an inventor’s freedom to practice without incurring enormous expense. And a law firm with a good grasp of intellectual property law and strategy can help by routing certain inventions to patents and others to defensive publication. A SOLUTION TO AGGRESSIVE PATENT PLANS Defensive publishing, however, is not just reactive. In the context of a carefully crafted IP strategy, defensive publication can actually expand the scope of new and existing IP protection. In fact, there are over twenty proactive ‘tactics’ that can be employed by the more astute IP strategist. And for lawyers, this is an exciting new area of expertise. For example, defensive publishing can counter aggressive patenting. As most experienced IP counsel know, it is possible for competitors to render a company’s core invention useless by surrounding it with incremental patents (such as adding an extra feature or changing a detail). Research and development departments, with the help of their legal advisers, can simply eliminate the risk of such ‘picket-fencing’ tactics by mischievous competitors. Through defensive publishing, they can put all product variants into the public domain, thereby preventing the patenting of these improvements by others and leaving the core concept protected. In effect, the defensive publications increase the scope of the original patent. Not only is defensive publishing an effective way of protecting future product lines, it can also offer huge leverage in competitive market places. Tactics can range from aggressive (such as publishing innovation in a competitor’s technology domain to prevent them from locking up future markets) to defensive (such as publishing product descriptions or disclosures made at conferences to help ensure that the patent offices don’t issue bad patents to a competitor.) Legal advisors can recommend more ‘creative’ tactics as well — such as ‘Patent Part, Publish Part’ in which the client patents an item (usually the element with more revenue potential) and publishes that which drives the sale of the patented part. In other words, give the razor away and sell the blades exclusively! Alternatively, one can publish patent-pending inventions to spark market interest in technologies that will be available for license. MAJOR BENEFITS FOR LAWYERS But the benefits aren’t just client-side. For lawyers, the drafting of defensive publications and providing strategic advice are new areas of expertise. It’s a new practice area; therefore, opportunities exist for the more astute legal practices to become market leaders. And there is evidence that the volume of defensive disclosures has the potential to be very high. Despite the ever-expanding patent rush that has involved the costly and complex process of patenting every incremental innovation possible, for most strong innovators, the invention-to-patent ratio is ten to one. In theory, this makes defensive publishing volumes ten times that of patents, not including publications from the more aggressive tactics! Given that a law firm becomes essential both to the strategic process and to the drafting process, it is clear that defensive publication industry is a mechanism to allow an IP-savvy law firm to become tightly integrated with its clients. OTHER MEANS FOR DEFENSIVE DISCLOSURE There are a number of defensive publishing platforms. Companies use their Web sites as a showcase for technological innovations, others outline ideas at conferences which serve a similar purpose. And in both the U.S. and Europe, there are paper publications that meet the same need. None, however, provide the full spectrum of ideal characteristics of a dedicated defensive publication Web site. An online site, such as IP.com’s defensive publication site, provides economy, ease of use, and rapidity of publication that are not available from any paper medium. Internet access to world PTOs and digital notarization, such as used by IP.com, makes a dedicated defensive publication Web site superior in terms of validation and availability, compared with corporate Web sites and conferences. Web tools ensure that your disclosure will be searched by worldwide patent examiners, and available, if needed, years later to support an invalidity defense in a patent trial. It also provides an economical means to rapidly put inventions into the public domain. This new online service is a sophisticated variation on the defensive publishing theme. More and more lawyers who appreciate the relevance of defensive publishing to client services should be using the Internet to their advantage. Online publishing represents tomorrow — a place that defensive disclosure aims to protect, and a place where the industry’s future lies. Tom Colson is CEO and President of IP.com, headquartered in Rochester, N.Y., with marketing and sales forces located in key cities worldwide. He was most recently vice president and general manager of the Intellectual Asset Management division of Manning & Napier Information Services, one of IP.com’s founding companies. For more information about IP.com, visit http://www.ip.com; e-mail [email protected]; call 00. 1.716.427.8180 or fax 00. 1.716.427.8183

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