[Electronics and audio company Sonos recently announced it will 'forward-publish' its patents to inspire others to 'create differentiated product.' We asked JD Supra contributors with expertise in these matters: beyond inspiring innovation, what are the best- and worst-case scenarios for a company forward-publishing its patents? Here is what we heard back from IP attorney Robb Roby, partner in the Orange County office of Knobbe Martens.]
Sonos announced recently that it would forward-publish its patent applications to inspire other inventions. However, the blanket rule was accompanied by a significant caveat: Sonos would not forward-publish patent applications relating to technology not yet commercialized. At first blush, forward-publishing applications may seem to be a benevolent policy. Clearly, these applications can help the company appear to be innovative, while mitigating the window of secrecy created by non-published applications or the 18‑month lag in publishing.
With a bit of study, however, the announced policy seems to be more a calculated public relations move with some strategic upside and limited downside.
Typically, unless an applicant requests non-publication, applications will publish within about eighteen months. With many technological developments, however, the design cycle from conception to commercialization will exceed the 18-month application publication cycle. There are some exceptions, such as applications filed late in the design cycle and later-filed continuation applications; however, these likely are the exceptions rather than the rule for most companies. Accordingly, it could be expected that very few of Sonos’ applications will be subject to the forward-publishing policy, depending on the company’s commercialization time table.
When an application is forward-published, there are a couple of apparent downsides. First, forward-publishing applications may provide more opportunity for preparation and filing of third-party preissuance submissions. A preissuance submission is a seldom-employed tool used to combat a competitor’s applications. Due to the timing requirements involved, forward-publishing applications will provide additional time for competitors to identify prior art that could be used for a preissuance submission. However, between September 16, 2012 and December 31, 2013, only 1,228 preissuance submissions were filed and, therefore, the risk is very low that forward-publishing would result in a competitor filing a preissuance submission.
Second, forward-publishing a first application could impact follow-on applications relating to improvements. By forward-publishing a first application, the improvement addressed by the second-filed application will need to be new and not obvious compared to the first application in Europe (and in the U.S. if the improvement application is filed more than one year after forward-publication). Thus, applications directed to improvements could face a more difficult examination following forward-publication of an earlier-filed application. Strategic timing of the forward-publication can minimize the risk.
On the other hand, forward-publishing applications can help hinder the ability of competitors to obtain patents relating to improvements or closely-related technologies.
First, forward-publishing applications can create prior art publications usable to reject applications before the official publication by the Patent Office. Second, forward-publishing applications can provide an earlier prior art date usable against applications in countries outside of the U.S. And, finally, forward-publishing applications, which typically describe the commercial embodiment and alternative embodiments, provides an expanded scope of prior art relative to the commercial product, which also is prior art.
On balance, forward-publishing is more likely to benefit Sonos than to pose significant risks to Sonos. Thus, the promised forward-publishing of applications may be a creative way to generate buzz about Sonos’ technology with some strategic upside and very limited downside.
[JD Supra's Law Matters series asks experts for their quick take on popular news of the day, and specifically how such matters affect people in their personal or professional lives. Stay tuned for other posts in the series.]