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Is filing a patent effective as defensive disclosure if the the patent is not granted?

Any application is published after 18 months (except publication delay request) or if the patent doesn't pass a preliminary examination is dropped out by the Office without publication?

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The answer is YES. A published patent application will act as a defensive disclosure (prior art) to any future patent application(s).

A patent application gets published after 18 months from the date of filing (or priority date, whichever is earlier), unless an early publication is requested.

The patent application is published even if the patent is not granted. However, some countries (ex: US) provide the option of withholding publication even beyond 18 months, if a foreign application is not filed.

For a subject matter to be patentable, it should satisfy 5 criteria namely:

  1. Patentable subject matter
  2. Novelty
  3. Non-obviousness/inventive-step
  4. Industrial application
  5. Enablement

The publication of your application will have an impact on the novelty and inventive step requirements of patentability with respect to future applications.

You may want to refer the article at the below link to get insight on strategy one could adopt based on the requirement.

http://www.invntree.com/blogs/are-patents-always-best-way-protect-inventions

For more information about patentability refer:

http://www.invntree.com/blogs/how-can-i-find-out-whether-my-invention-patentable

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  • I still have a doubt. If filing a patent is effective as defensive disclosure in all cases how can services like researchdisclosure.com charge $ 120 per page for defensive publishing? The cost of just filling a pantent application is much less to obtain the same result.
    – user8305
    Sep 17, 2014 at 20:56
  • With regard to the first link you provided, one consideration is missing according to me: industrial secret may be better than a patent in many ways but it doesn't protect you from the possibility that someone else, understanding your technology, files a pantent application and block you to use your own invention.
    – user8305
    Sep 17, 2014 at 21:02
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Regarding the first query, the patenting expenses in total (including professional fee) will be much higher than expenses involved in defensive disclosure. For example, IP.com charges about USD 225 for a 17 page disclosure.

Opting for defensive disclosure will establish your invention as prior art thereby preventing others from patenting your invention. However, you cannot prevent or stop others from making, using, selling, offering for sale, importing a product or process based on your invention disclosed.

Trade secrets have their pros and cons, and should ideally be used as a strategy when there is a good probability of maintaining the information as a trade secret.

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If you meet all the formal requirements the application will publish. I believe they have also eliminated the fee for requesting early publication so you don't need to wait 18 months.

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You should know that patent application filed in a country will not be a prior art in second country unless its published. Now it will serve same purpose as defensive publication in filed country but not for other countries. After publication of application it will serve same purpose of defensive publication i.e. after 18 months in normal course. So in my opinion it does not serve as same purpose.

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