Home > Topics > Patents and Patenting: Balancing Protection with the Public Domain > Defensive Publishing and the Public Domain > Editor's Summary, Implications and Best Practices

The nature of public and private and balancing between the two has been a perennial concern for many societies. In the west, such a debate has been going on for over two thousand years. Plato argued against private property (because it would corrupt the personality by infecting it with greed), while Aristotle essentially argued for private property (because it would enhance an individual’s sense of identity and self-esteem and allows for the optimal economic use of the commons).

Private goods are those over which there can be competition or rivalry, and someone will be excluded from their use. Private goods typically are traded in markets. If the market is able to agree on a price (such as for bread), the ownership or use of the good (the bread) is transferred. Further, once the good is consumed (when the bread has been eaten) others are precluded from also eating it.

Public goods, by contrast, are goods whose use by one person does not compete with nor rival their use by another person (non-rival) and no person can exclude other persons from their use (non-excludable). Sunlight, traffic lights, street signs, peace, the eradication of smallpox, and so forth are examples of public goods. Crucially, who provides the public good is not a factor in determining whether a good is public or private. Governments provide public goods (such as street lights) and they also provide private goods (for example housing and medical care). Similarly, the private sector may provide public goods (such as technical norms or street lights). The street light illustrates how private goods (patented, high-efficiency light bulbs, electricity produced by companies, street posts installed by local private contractors) become public goods in the manner in which they are made available. Importantly, the creation of a public good is not necessarily free of costs. Costs may have been borne by society at large (the street light will have been paid, indirectly, by the tax payer) but the enjoyment or use of it is free to any and all individuals who pass through that particular street.

Further, these examples demonstrate how public and private are in some respect two facets of the same coin; both facets are needed for the coin to exist and have value. But as this chapter shows, how this plays out with the information and inventions generated by science is not as straightforward as the simple examples above might lead one to believe. This is due, in part, to the fact that inventions, unlike real property, once disclosed, are essentially non-rival and non-excludable. That is, unless intellectual property (IP) rights systems modulate access to and use of them. Their chapter, at the nexus of public and private, provides in-depth guidance about using defensive publishing and the public domain as tools to achieve a range of IP Management goals. The authors examine the extent to which the public domain can in fact be depended upon and even leveraged to facilitate and preserve access to technologies. Appropriately for this Handbook, the chapter is not a policy discussion on the relationship between IP systems and the public domain. Rather, it analyzes a range of strategies covering practical questions of how to achieve these goals given the existing policy environment.

The authors view different strategies of defensive publishing and of utilizing public domain research inputs as options within a broader set of IP Management strategies—including the options of patenting, trade secrecy, trademark protection, bailment, and more. All of the above can be used in various combinations to find the balance between protection and accessibility that both promotes technology development and allows for ongoing innovation. They argue that the choice of the strategic option depends upon a pragmatic and realistic understanding of the nature of the public domain. In order to clarify and illustrate this, the public domain is compared to two different but closely related property rights concepts: open source and the commons.

Open source is defined as the body of knowledge over which property rights are claimed by owners, but the accessibility of that knowledge is systematically provided by the owners under terms of a license that regulate such accessibility. A commons is by its nature a less clearly defined concept, varying according to the context in which it appears, but characterized by most authors to include a lack of private ownership, open access, and/or collective management.

It should be noted that defensive publishing strategies can be more viable than patenting in the following two principal cases:

• when development of the technology will not depend on private sector investment
• when the leverage that ownership could provide, such as the ability to segment markets or bargain for access to complementary technologies, is not important.

Defensive publishing can be considerably less costly, eliminating patent costs and transaction costs in licensing, especially when providing broad access to a technology is the ultimate desired outcome. When cost or infeasibility makes enforcing a patent unlikely, defensive publishing is also the more sensible alternative for companies. It can also be very effective when combined with patenting (for example, by patenting a core technology and then defensively publishing any smaller modifications or applications immediately around that core technology).

The second aspect of this chapter deals with the use of public domain technologies as research inputs. They outline how this approach can reduce transaction costs and mitigate potential IP access problems downstream in the course of R&D. However, as for any IP management strategy, attention should be paid to the overlapping, web-like nature of patent claims and the ever shifting boundary of the public domain. Even when a preliminary indication is found that a technology is in the public domain, such as an early scientific publication or an expired patent, more recent patents can still claim certain uses of that technology, such as particular combinations or applications.

The public domain can—and should—be a crucial resource to public sector institutions—and companies for that matter. Judicious defensive publishing and the careful use of public domain technologies offers IP managers everywhere effective, flexible, and less-expensive tools for exploiting these resources. Intellectual property is not a panacea for the management of innovation. Neither is open source nor the public domain. Both have utility and limitations. The art is to use both public and private and to manage the interface between them.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• The public domain is defined as the absence of IP claims. Nonetheless, the dense Web of overlapping patent claims can obstruct the commercial use of even public domain technologies. This has significant policy implications.
• Because public domain technologies play an important role in publicly funded research, defensive publishing can be used by public sector research institutions to help expand and reinforce the accessibility of technologies in the public domain.
• Because of the limitations and complexity of defensive publishing, blanket policies that require defensive publishing by national research institutions deny them the opportunity to employ their research results strategically and in combination with patenting.
• Public sector research-based institutions should be encouraged to develop strategies that judiciously use the public domain and intellectual property so that they have additional leverage for making technologies available, particularly in fields characterized by rapid patenting.

For Senior Management (university president, R&D manager, etc)

• A few relatively straightforward defensive publishing strategies can enlarge and reinforce the public domain and create more opportunities for a research institution.
• Encourage publication with maximum inventive disclosure through a balanced set of incentives for researchers and technology transfer officers (such as the inclusion of defensive publications in promotion and tenure reviews in addition to the number of patents and publications in peer-reviewed journals). Few institutions today have transparent incentives for researchers or technology transfer officers to prepare defensive publications.
• Use public domain technologies as research inputs to reduce the risk of IP complications in the downstream commercialization of technologies.
• Provide specific policies for technology transfer offices (TTOs) to use defensive publication mechanisms as one of their tools for protecting and leveraging intellectual property. This requires carefully crafting performance metrics for TTOs and their officers.
• Provide venues for defensive publication as part of an outreach program or university mission. Dedicated services could include a university technical disclosure bulletin modeled on the IBM Technical Disclosure Bulletin or a centralized registry of unpublished papers with official date stamps posted on faculty Web sites for online searches.

For Scientists

• You cannot assume that something published in the literature or made available to you by a colleague is not covered by IP claims. In much of the life sciences, the Web of patents touches commonly used research tools multiple times. This should neither deter you nor distract you from good science. A few simple practices can minimize possible future problems.
• You can seek to use technologies that are clear of IP claims and thus in the public domain. This may free up your work and make any inventions that arise from your work more valuable, since they would be less likely to depend upon or fall within the scope of dominating patents.
• One of the services of PIPRA is to advise researchers in the plant sciences about what research inputs are in the public domain and which are available for licensing on reasonable terms. If you are engaged in the development of biotechnology crops, you may find their Web site and services quite useful.
• You can intentionally make technologies you create accessible to everyone by publishing them instead of patenting them. The mere fact of publishing results, however, does not guarantee full public access. Patents may still encroach upon the technical contents of your work. Speak to your technology transfer office (TTO) officer about your publication and ask them to help with the range of details required to turn your publication into a readily identifiable disclosure of patentable technology for those who are later searching for prior art.
• Consider ways to use language in your journal submissions that expand the space around your technology—including further work that would be an obvious extension or your discovery’s possible usefulness when combined with other technologies. Quite often in journal articles a single paragraph can be sufficient for such defensive positioning.
• Publications in scientific journals may be edited down to remove material that would otherwise have made them more effective as prior art. These include materials and methods, alternate methods tried, as well as more forward-looking or speculative discussions on possible applications of the results. For this reason it may be valuable to consider posting a longer working paper version, supporting materials, or appendices on line or in searchable databases with a valid date stamp.

For Technology Transfer Officers

• It helps to have more tools than just patents to get technology out of the lab and into practice. Consider first whether a technology requires investment by the private sector (and thus exclusivity) to be put into practice.
• The art of defensive publishing may run contrary to your instincts if you tend to think in terms of controlling a technology by ownership (and thus excluding others from using it). Think instead in terms of maintaining control of the technology—or elements of it—by casting it into the public domain and thereby preventing others from owning it (and excluding you from using it). Think of defensive publishing as a simple compromise strategy: I won’t own it, but you won’t be able to own it either.
• You may be called upon to advise researchers about how to craft defensive publications. You likely have more expertise than they do when it comes to maximizing their defensive potential. Not being immersed in the technology, you may also be able to help them to brainstorm and anticipate various combinations or applications of the technology. Such discussions may also be very valuable in identifying areas where you may want to file patents.