ALP: How can I prevent competitors from using patents to block my biotech start-up company from commercializing its own innovative products?

June 2007

Obtaining and maintaining patents involves both asset protection and risk management for any company. For example, a company that has failed to secure any patent protection may lose control over its core technology, and is vulnerable to law suits and faced with licensing agreements.  However, obtaining and maintaining patents can represent a substantial portion of a company’s intellectual property budget.  That is likely to be an issue for many biotech start-ups, operating on limited resources and managing a very high cost for R&D expenditures. For those situations where the cost/benefit analysis indicates that the expense of patent protection is not justified, an alternative form of risk management is a defensive publication, especially when trade secret alternatives are not tenable or otherwise limited.

Defensive publication is astrategy used to prevent another party from obtaining a patent on a product, apparatus or method. The strategy consists of disclosing an enabling description of the technology so that it enters the public domain and becomes prior art.  Therefore, defensive publication of perhaps otherwise patentable information may work to defeat the novelty of a subsequent patent application. 

Using defensive publications must be done within the context of your company’s broader strategy for protecting its intellectual property.  The goals served by a defensive publication include:

• preventing competitors’ patents from issuing;
• creating technology licensing and sales opportunities;
• stopping or facilitating patent litigation;
• protecting one’s patent portfolio without spending patent application funds; and
• saving money.

Whether published information qualifies as a “printed publication” under U.S. patent law is a legal determination based on the underlying facts.  Accordingly, always consult with your IP legal counsel if you are considering a defensive publication strategy.