Chinta & Fratangelo LLP



A patent gives the patent owner the ability to exclude someone else from practicing the claimed invention, which can lead to market exclusivity if a product is within the scope of an issued patent claim. But an important strategic option could be a defensive patent filed to establish a record of prior art to impede someone else from monopolizing a competitive space.

So in a sense, there may be two reasons why an inventor would want to secure a patent:

  1. In order to control a market, by creating an asset that keeps competitors off the market or can be licensed or sold. This is offensive patenting.
  2. To keep a concept safe and preventing somebody else from getting a patent on the same idea. This is defensive patenting.

When most people think of patents, they are thinking of offensive patents. Theoretically, the power of an offensive patent is ultimately the ability to bring an enforcement action (lawsuit) to force an infringer to stop selling the patented thing or pay royalties. This enforcement power means that patents are assets.

But inventors can be well served at times with a defensive patent application. By filing a defensive patent application and going through the publication process, the objective is to prevent someone else from getting a patent on the same subject matter, because your patent application is prior art against others. So someone else could be prevented from getting a patent on the same subject matter.

This can be a valuable strategy in several scenarios. For example, for an invention if the inventor is unsure of the value of the invention, or if an invention is deemed to have low value, but someone else getting a patent on the invention would be an obstacle. Another potential scenario is a situation where an inventor does not want to invest in a patent portfolio on an invention, for whatever reason, but wants to block others from getting a patent on the same invention.

Since defensive patents are typically intended to be only prior art against others, there is usually no need to go through the entire prosecution process. Filing a patent application and allowing it to publish accomplishes the defensive purpose of establishing prior art that can be used against others. So there is usually no need to obtain an issued patent for a defensive patent application.

Normally, patent applications are published 18 months after the earliest priority date (i.e., the earliest application filing date, which can be a provisional patent application). An alternative to a defensive patent application can be the publication of a journal article on the subject. However, most journals have a peer review the process (that may be an obstacle to the needs for a disclosure) and may have formal requirements that are difficult to meet. Less well known journals may not be detected by prior art searches, which defeats the purpose of a defensive filing. By contrast, patent applications have minimal formal requirements and can even be filed with hand-drawn drawings. Moreover, patent applications are easy to locate in official and non-official databases, so are less likely to fall through the cracks in a search.

To discuss your patent strategy, contact me today.