Patent application or defensive publication?
The decision whether an innovation should be protected by a patent application or disclosed through a defensive publication is strategically significant. While patents secure exclusive rights, a defensive publication offers a cost-effective way to counteract the grant of a protective right to third parties. Answering the questions below can be an additional decision aid alongside professional counsel when choosing the right strategy for your innovation or invention.
Questions for evaluating an invention
For an evaluation you can rate the following questions for your invention. Move the slider towards the answer that applies more closely to your invention. The clearer your answer is, the further out you set the slider.
Question 1 of 11
Is it intended to actively enforce a granted patent on the invention against third parties later on (for example by suing an infringer in court)?
YesNoQuestion 2 of 11
Is the IP budget sufficient to bring patent applications to grant in those countries where the invention is marketed, manufactured or distributed (building a patent family)?
YesNoQuestion 3 of 11
Are financial resources available to defend a granted patent in opposition or nullity proceedings if necessary?
YesNoQuestion 4 of 11
Is it planned to grant licences or enter into cross-licensing through the patent (active commercialisation of the granted patent), or to sell the patent?
YesNoQuestion 5 of 11
Is a scope of protection obtainable that is broad enough for costs and benefits to be in an economic relation (where relevant prior art stands against a patent application, the obtainable scope of protection may turn out uneconomically narrow)?
YesNoQuestion 6 of 11
Is a patent a prerequisite for investors, partnerships, company valuations or public funding?
YesNoQuestion 7 of 11
Is the technical solution or the invention hard to detect because it is part of a complex system and cannot be inspected without disassembly, or is an infringement of a patent on the invention hard to prove?
NoYesQuestion 8 of 11
Is the technical solution or the invention a “game changer” that will attract considerable attention among competitors?
YesNoQuestion 9 of 11
Does the invention concern a key technology on which further business success can be built?
YesNoQuestion 10 of 11
Is the invention so original or groundbreaking that a patent granted on it can secure a long-term economic advantage, also with regard to existing patents or the prior art?
YesNoQuestion 11 of 11
Can the invention be exploited profitably for at least 10 years, and does the profit in any case exceed the running costs of the granted patents (the respective national annual fees, where applicable for a patent family)?
YesNo
Your result will appear here
Once you have rated or skipped all 11 questions, your value on this scale is calculated and the matching tendency is shown.
The rating levels at a glance
The rating of all questions produces a value between 0 and 100 %, which falls into one of these five levels. 0 % corresponds to a clear tendency towards a patent application, 100 % to a clear tendency towards a defensive publication.
| Range | Tendency and meaning |
|---|---|
| 0 to 22 % | Clear tendency towards a patent applicationThe rating falls clearly towards a patent application. The answers suggest that an exclusive right could be economically relevant for this invention. |
| 23 to 44 % | Tendency towards a patent applicationThe rating falls towards a patent application. A defensive publication can additionally be considered as a supplement, for example to establish the invention as prior art on the day after a patent application. |
| 45 to 55 % | No clear tendencyThe rating gives no clear direction. A patent application and a defensive publication carried out on the same day are conceivable as a combination. A further evaluation with a patent attorney or lawyer can bring additional clarity here. |
| 56 to 77 % | Tendency towards a defensive publicationThe rating falls towards a defensive publication. The answers suggest little interest in an exclusive right of your own. |
| 78 to 100 % | Clear tendency towards a defensive publicationThe rating falls clearly towards a defensive publication. The answers suggest little interest in an exclusive right of your own. A defensive publication aims to create prior art in order to be able to counteract a later patent application by third parties on the same invention. |
Legal notice
This page and any of its contents do not constitute legal advice and must not be interpreted or understood as such. Proofbox is not authorised to give legal advice. This decision aid is not exhaustive and cannot replace professional counsel from a patent attorney or lawyer. In any case, consult a lawyer or patent attorney in your jurisdiction before taking action. A defensive publication creates no industrial property right. Whether it is taken into account as prior art in a given case is decided by the competent authority or court in free evaluation of evidence.