If you talk to a corporate patent attorney about why the company files patents, you may hear things about building a defensive portfolio, creating valuable long-term assets, or protecting key developments from exploitation by competitors. But increasingly the top priority of the company regarding IP is “Freedom to Operate”.
Put simply, most businesses just want to operate their core business well and not be impeded from doing that. Patent licensing/revenues are not a major consideration for most and litigating patents are incredibly expensive (monitoring the market for violations and engaging in multi-year complex lawsuits, etc). Even filing a patent typically takes about three years and around $20,000.
The United States used to be a “first to invent” regime, which meant that if you had invented something and carefully recorded it, say in a signed and dated journal, that could be pulled up later and used as prior art. Whoever thought of the idea (and wrote it down) first had priority. This meant that the main focus in innovation was simply writing down your idea somewhere. The downside of this was having to undergo discovery for these journals and this work in order to maintain freedom to operate if some counterparty were to hit you with a bogus infringement suit for IP that you had already invented.
On March 16, 2013, the US became a “first to file” regime, which instead gives priority to whomever first files an application for the intellectual property with the PTO. Now simply having well-organized inventor journals is not sufficient to defend your IP — you actually have to have it filed, or otherwise available to an examiner as prior art in order to block a competitor’s claim.
The latter part is the interesting bit that is yielding a shift in IP strategy at some of the larger companies — if a large company’s primary goal is to ensure freedom to operate (vs exclusive use of the idea) a full, formal patent may be overly cumbersome and expensive — simply publishing the intellectual property (in the commons, royalty-free for anyone to use) in some well-defined location that is known to patent examiners could suffice.
That’s exactly what the Technical Disclosure Commons site is (or “TDCommons”). It’s a central repository for companies big and small to post “defensive publications” (or “DPubs”) that contain potentially patentable material where the author or author’s company want to preserve freedom to operate cheaply by making the material freely available to the public. This then gives incontrovertible evidence of a publication date for use in establishing prior art.
One of the best parts about this as an inventor is that it is not only much faster and cheaper to file DPubs but that it’s totally okay to share DPubs with fellow inventors and read other people’s DPubs, since all the IP is free-to-use.
That last bit should make you wince a little bit, since the ostensible point of the US Patent & Trademark Office was to allow inventors to freely share technical details with each other without fear of being ripped off, but any modern corporate patent lawyer will tell you that the first piece of advice they give to new inventors to the company is to never read other people’s patents. The reason why is that if a counterparty can show “willful infringement” — namely that a counterparty read a patent, implemented the patent, and did not license the use of the patent — that not only are there treble damages but there’s also an inversion of the burden of proof: the violating party that read the patent has to prove to the courts that even though they were aware of the other party’s patent, the invention doesn’t violate any of the claims of the patent. (In a typical case it is up to the plaintiff to demonstrate that the defendant’s invention constitutes a use of the plaintiff’s IP.) This makes the case much more risky and expensive and consequently the best way to ensure that your inventors aren’t “tainted” with other party’s IP is to have them never read any patents, ever. Sigh.
A disclosure commons gives us back this open IP sharing environment, at the price of loss of exclusivity and control. For most businesses simply looking to preserve their own freedom to operate, it may be a tradeoff that makes sense.
To wit, here are some of my own TDCommons publications, which you are free to peruse and enjoy with no fear of IP taint: (note the author is listed as “NA” for many of these; several companies decide to mask authors when publishing)
- “Remote ranging using vibrations and ultrasonic transmission”: What if you could use wideband calling features to interrogate the remote end of a phone call?
- “Laser Guidance to Project Planned Human or AGV Paths”: What if you could direct people in a warehouse-type environment with giant laser pointers on the ceiling?
- “Rack Transporter”: What if you could move a rack full of servers from one place in the datacenter to another while the rack was still actively serving traffic?
- “Automatic Hardware Acceleration of Computational Hotspots”: What if you could automatically offload parts of compute jobs to special-purpose hardware accelerators?
- “PROCESSOR CACHE SNAPSHOT AND RESTORE”: What if the OS + CPU captured a process’s full cache state and restored it when context switching?
- “Secure Separation and Control of Multiple Virtual Machines”: What if your phone had a physical switch to change modes from work to play to anonymous, such that these modes were sandboxed from each other?