Freedom to operate? The value of Research Disclosures
Rob Adams
Thomson Scientific
July 2006
Research Disclosure is a publication service owned by Kenneth Mason Publications that enables individuals/companies to disclose details of an invention and so establish their claim on the state of the art — preventing others from being able to patent the same invention. Research Disclosures play an important part in comprehensive prior art searching, as they help intellectual property searchers to evaluate freedom to operate.
One of the fundamental requirements for securing patent protection is "novelty". Patent applicants must be able to demonstrate that their invention has not been disclosed in public, by themselves or anyone else, before their application was filed. This necessitates particular policing by technology licensing teams in academic and research organizations, as even the prior publication of a poster at an academic conference can thwart attempts to obtain a patent. Once a patent is granted, it gives the holder or licensee the right to prevent others from manufacturing, using, importing or selling the patented invention for the lifetime of the patent. This leaves the owner free to exploit the technology and to reap any financial benefits to recoup their research, patenting and development costs — and, if they are lucky, more besides.
The patent application process can be long and expensive, requiring professional help to prepare and submit the correct documents, at the right times, in chosen territories. If a competitor holds a patent in the same technology area there is a risk of expensive litigation, usually based on complex legal and technical issues. One example is satellite broadcaster EchoStar Communications, who earlier this year were ordered to pay TiVo Inc. USD 73 million for patent infringement. The case rumbles on, with EchoStar appealing against the validity of the patents, in addition to the original court's handling of the evidence.
Ownership of a patent is, however, not an absolute prerequisite for successfully commercializing an invention. For the reasons outlined above, innovative organizations and individuals do not always follow the patenting route when they develop new intellectual property. They may instead decide to prevent others from patenting the same technology area — and thus free themselves from the risk of future litigation — by publishing (disclosing) the invention as quickly as possible. By establishing the prior art in that field they can prevent others from being able to patent the same invention. A Research Disclosure (RD) provides a route for this: for a small fee Kenneth Mason Publications publishes details of inventions from individuals and companies both online and in the monthly RD Journal published on the 10th of each month. Most RDs are disclosed anonymously, leaving the original inventor free to carry on their R&D in relative anonymity until they are ready for commercialization.
Research Disclosure coverage in Derwent World Patents Index
Thomson Scientific has recently reinstated coverage of Research Disclosures in Derwent World Patents Index® (DWPI SM), starting from update 200638 (with Research Disclosures published in May 2006). Each disclosure goes through the same editorial process as patents, and appears in a similar format in the file with features including:
- Relevant IPC codes, DWPI classifications and manual codes, plus an "RD" identifier, to distinguish them from patent records. These value-added DWPI features value enhance technology searching, helping to pinpoint research in specific fields
- An Alerting Abstract composed from the text in the original document under the same editorial guidelines used for patent abstracts — enabling rapid scanning of search results
A backfile from March 2001 to May 2006 will also be added in stages over the coming months, leading to full coverage of Research Disclosures back to October 1978.
Research Disclosure coverage is available in all versions of DWPI , including online via Delphion and Derwent Innovations Index (DII). Their inclusion in technology search results gives patent searchers greater confidence when making decisions to research, patent, commercialize or otherwise protect a particular technology area.
Sample DWPI Research Disclosure Record
Research Disclosures © Kenneth Mason Publications Limited 2006
www.researchdisclosure.com
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