[Electronics and audio company Sonos recently announced it will be 'forward-publishing' its patents to inspire others to 'create differentiated products.' We asked JD Supra contributors with expertise in these matters to offer their perspective on this news. Here is what we heard back from Thor North, attorney and partner at Australia-based patents and IP law firm, Freehills:]
This looks like a case of good PR practice meeting good patent practice. There are very few strategic reasons to forward publish a patent application that outweigh the benefit of the 18 month headstart that the usual non-publication period of the patent system provides. Sonos know this, which is why they have not implemented a blanket policy of forward publication. They are keeping secret those patent applications that they have not yet commercialised. This maintains their chance to have first mover advantage with new technologies without telegraphing their R&D direction to the world.
On the other hand Sonos may be onto something here. It might also make the patent system a highly relevant tool for R&D by making the latest developments publicly available earlier...
The Sonos website also publicly maps their patents to their products, in the name of transparency, but again it’s really about good patent practice. Perhaps the modern equivalent of marking products with patent numbers. A competitor who copies a Sonos product may struggle to claim “innocent infringement” of any patent that their copying infringes. It is also not clear how Sonos will forward publish, but the situation may become even more interesting if Sonos seek official early publication of these patent applications. In some jurisdictions damages for infringement may start to accrue from the date of official publication of the patent application in the jurisdiction, so early publication starts the meter running earlier. These two factors may be added disincentives to the competition to copy.
The only other strategic reason, from the perspective of the patent system for forward publishing a patent application is to create published prior art document that may prevent your competitors from obtaining their own patent on a similar technology. This may only add incrementally more information to that already made public by the product, but a published patent application is certainly a more “convenient” form of prior art than a product. Patent publications are indexed and searchable, and may teach alternative (if non-optimal) versions of the invention, and believe it or not, present information in a more straightforward manner than many products, which may require a screwdriver, de-compiler, electron microscope or gas-chromatograph (or all four) to “read”.
On the other hand, Sonos may be onto something here. If you take the long view, what if the patent system encouraged or forced earlier publication? What if the 18 month non-publication period was abolished? Some industries would hate this – the 18 month non-publication window can be critical to maintaining competitive advantage as discussed above. But there are many other industries where immediate publication would offer greater clarity. It might also make the patent system a highly relevant tool for R&D by making the latest developments publicly available earlier, rather than keeping them secret for the period when they are most relevant. That might even inspire other inventors.
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[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.]
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