Corporate Science in the Patent System: An Analysis of the Semiconductor Technology

Corporate scientific publications are often presented as a strategic means for firms to create prior art with the objective to prevent rivals from patenting related inventions. This defensive disclosure strategy has attracted the attention of academic scholars in the field of law, economics and management science. The academic literature has developed different answers to the question why firms engage in defensive publishing at the costs of forgoing the right to exclude third parties from using the invention by applying for a patent. One stream of the literature, mainly put forward by economic scholars, analyzes defensive publishing in the context of patent race models. In these models, the laggard in the race has incentives to publish preliminary results that are not patentable in order to prolong the patent race. Scholars in law and management science consider open disclosure as a complementary strategy to patenting. The latter perspective finds partial confirmation in interviews with patent experts in the corporate sector, while the patent race model is largely rejected by practitioners. Both streams of the literature assume that corporate publications enter the pool of prior art which is relevant to judge the novelty of patent applications at the patent office and that they have the power to block or hinder patent applications. This proposed mechanism behind corporate publications as a means to preempt patents on related technologies so far lacked empirical evidence. This paper provides a first (large-scale) analysis of the effectiveness of corporate scientific publications regarding their power to block rivals’ patents. With focus on the semiconductor technology we show that scientific publications by corporations challenge the novelty and the inventive step of patent applications at the European Patent Office (EPO) significantly more than other pieces of prior art. Hence, we show that the mechanism behind the concept of defensive publishing works. Further, detailed information from the EPO patent examination procedure allows us to show that corporate publications threaten the novelty of patent applications in combination with other pieces of prior art, like patents, rather than as standalone documents. This supports the view of practitioners and scholars in law and management science who argue that corporate scientific publishing can be an effective means for firms to protect their freedom to operate if used a complementary part of a firms' overall intellectual property protection strategy.

Della Malva, Antonio and Katrin Hussinger (2010), Corporate Science in the Patent System: An Analysis of the Semiconductor Technology, ZEW Discussion Paper No. 10-098, Mannheim, published in: Journal of Economic Behavior & Organization.