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The Prior Art Paradox

by Doug Miller on July 30, 2008

Admittedly I am not an IP attorney, or for that matter even a patent or IP expert. Having been introduced to the market only a year and half ago, a lot of the concepts and practices are new to me. I have to admit that I find it to be a very fascinating field. One of the things that has really jumped out to me while talking to our customers and prospects is the divide—make that chasm—that exists in corporate attitude and policy regarding whether to allow inventors, engineers, and researchers to view prior art around inventions and projects they are working on. This is one of those issues that it seems there is are only two colors black and white—no shades of grey.

On the one hand, many companies do not want researchers to search for or view any prior art as part of their standard research process. The thinking here, driven it seems by corporate legal, is that by not allowing the inventors to search for or view related art that the company is maintaining “plausible deniability” in the event of any potential future infringement actions. And in fact, current patent legislation fully defines and supports this practice, and to a large extent encourages patent filers to perform minimal prior art searching on their own. I personally think this is one of the flaws in the current patent system and the reason that in many cases prior art is missed by examiners, and is a great argument for the currently being tested patent peer review and the move toward patent legislation reform. (NB: This is my personal opinion and does not represent the views of Innography). This approach represents the traditional view of intellectual property as a defensive only mechanism, still held by a large number of companies.

On the other hand, is the approach that seems to be widely adopted by companies that are embracing innovative strategies and open innovation. Companies in this camp encourage researchers and engineers to fully understand the IP landscape. By exposing them to prior art and related IP from their field as well as other fields and industries, they are encouraging truly innovative and unique approaches to their projects. By seeing what has already been done in the area of their invention, they can invent around existing art to develop truly novel technologies. This approach often identifies opportunities for collaboration through licensing or partnering that can help these innovation-driven companies introduce new products to market faster. In these companies, an innovation approach has replaced the traditional courtroom approach and is leading to truly unique ideas being developed faster than ever before.

My own observation here is that I find the dichotomy to be striking, in fact more so than in any market I’ve ever been associated with. Perhaps it is a very good indicator of a shift in market behavior and attitudes and represents a new way of thinking about intellectual property as the intangible, leveragable asset that it is. Neither approach is right or wrong, but it is definitely an issue that finds companies polarized.

For our purposes as a company, it doesn’t really matter which camp our customers fall in since our product can support/accommodate either approach and we already have customers firmly entrenched in each camp. For my way of thinking the open approach makes more sense—but hey that’s just me!