May 24, 2018

Identification, creation and auditing every 6 months is the correct approach to profiting from such
invaluable creation especially for companies that stand on patentable inventions. Every company has to
identify the kind of Intellectual Property it is creating and then work ways towards protecting it. This article
covers how to strategize around companies that create patentable inventions.

IBM was granted 9043 patents in the year 2017 alone and has crossed another milestone of getting more
than 10,000 patents as it has done in every other year! With the increasing competition between
companies and given that the success rate of R&D is 1% after throwing in huge amount of financial risk,
how do these companies protect their ongoing R&D without the risk of loosing their secret to their
competitors. Afterall, employees leave with tradesecrets all the time and secrets get leaked all the time!

Well, here is what IBM used to do: publish ideas that they would not file patent on and ones they are not
interested in creating a business around but at the same time stop competitors from patenting it. When
one publishes any document or brings something to the public, it forms prior art. Anything that is prior
art, i.e., is already in the public domain does not get patent protection, forever! For any idea to get patent
protection it has to be (1) new or novel (2) useful (3) there has to be an inventive step and (4) one should
be able to repeat the invention using the steps disclosed. When something is published it does not satisfy
the 4 ingredients and hence falls in public domain.

IBM routinely did this in their bulletin called the, “IBM Technical Disclosure Bulletin”. This was started by
IBM to disclose their company ideas but soon became one of the formal search database for companies
and for patent examiners to look for any published paper. It is now part of WIPO search database since
the bulletin has close to 400 papers submitted every month from all over the world!

Lesson is: if you cannot patent then publish. But remember that this is a double edge sword. Once
published, it cannot be taken up for patent protection in any part of the world! forever!!!

So evaluate if you want to publish it or want to get patent protection. If you do not want to publish and
do not want to get a patent protection because the protection is only for 20 years but want to keep the
secret forever then opt for tradesecret protection. Anything that can be kept a secret and that brings in
the edge can be kept a tradesecret. Famous example would be the Coca Cola tradesecret protection for
the formula which gives the fizzy taste, is a million dollar worth! Now, keeping a tradesecret takes a lot of
steps and if you are not able to keep it a tradesecret then think about patenting the product or the process.
If you are able to monetize within one year, then apply for provisional patent but if you still need more
time but less than a year then apply for complete patent protection.

Rajalakshmi Nesargi

Rajalakshmi V Nesargi brings to table an experience of more than 15 years gained in Intellectual Property from the US and from India. She holds LLM in Intellectual Property from Franklin Pierce Law Center (now University of New Hampshire), USA. Ms. Nesargi has extensive experience providing strategic advise on Intellectual Property creation and asset management through regular audits. She has co-authored many books and authored many articles on Intellectual Property. She also advised the Government of India on Copyright Law Amendment keeping in my mind the music industry. She is a legal consultant to NASSCOM 10,000 Startups.