Using Patent Applications Defensively

I sometimes hear from inventors and companies that have come up with a new product and they’re worried that their competitors may get a patent on the product later.  In fact, their competitor has done this in the past.  They believe that they came up with a product first and then their competitor filed a patent application covering the same product.  At a minimum, they have to respond to the competitor’s accusations of infringement by trying to prove an earlier invention date, etc.  At worst, they had to defend an expensive infringement suit.  Plus, the competitor used the patent for marketing purposes and hurt the client’s image in the field.

The first thing I tell such clients is that they should be scrupulously documenting their inventive activities.  The second thing is to file a patent application as soon as possible.  Because the US system remains a first to invent system, if the client can prove it was the first inventor, it should be able to get patent protection (assuming the invention is patentable) and not be subject to a competitor’s patent.

Sometimes the client is not really interested in patent protection, but just wants to be certain that a competitor can’t get a patent that would block the client from marketing its own product.  In that case, the client may want to make the invention public as soon as possible in order to create prior art that would preclude a competitor from later getting a patent on the same product. 

One option is to publish the invention in a journal or other printed publication.  In some scientific fields, this is a good option.  The publication process can be slow, however.  Another option is to publish information about the invention on the Internet.  This has the advantage of being almost instantaneous.  Due to the dynamic nature of the Internet, dating publications on the web can be tricky. 

A Better Option

For each of these options, especially Internet publication, the client may be waiving all rights to patent protection by making such publication, and almost definitely is giving up foreign patent rights.  Even if the client is absolutely certain that it is not interested in patent protection, I still advise another option–filing a patent application.  This option has the advantage of preserving patent rights, including foreign rights, and creates a date certain for the information contained in the application.  Thus, the filing date of the application can be used against the competitor who tries to claim rights in the invention.

Furthermore, unless the applicant specifically requests otherwise, patent applications are published which creates prior art against the competitor’s patenting attempts.  In the US, patent applications are published 18 months after their earliest priority date and are prior art as of their filing date.  For example, a patent application that is filed today would be published around July 5, 2011, but would be prior art as of January 5, 2010.  Thus, even if the competitor files prior to the application becoming public on July 5, 2011, if it is after today’s date, the published application is still prior art.  And applicants can request earlier publication if that is their goal.

It may also be that the client originally says that it does not care about patent protection and merely seeks to protect itself defensively.  A year later, while the patent application is pending but has not yet been examined, the product is highly successful and the client wishes it had applied for a patent.  Without the pending application, patent rights would be be lost after the one year grace period.  Because the defensive patent application was filed, however, the application will be examined and the invention may still gain patent protection.

If the client truly decides that it does not desire a patent, a published patent application can simply be abandoned to avoid further expense.  This can be done either expressly, by filing a notice with the PTO, or by simply not responding to an Office Action.


A patent application can be a good vehicle for defensive purposes due to the publication of patent applications at the PTO.  Published applications become prior art as of their filing dates.  And filing a patent application near the beginning of the process preserves patent rights if their is a change of heart regarding whether such rights are desired.

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