Frequently Asked Questions

Background Questions

  1. How are innovations and inventions usually protected?
  2. Innovations and inventions can generally be protected in one of three ways.

    • Obtain a patent. A patent is the right, granted by a government (in exchange for full disclosure), to exclude others from making, using or selling products and services for a period of time (generally twenty years from the filing date).
    • Maintain secrecy. Innovations or inventions that are safeguarded from disclosure to others by policies and procedures are trade secrets. They are generally protected as long as secrecy is maintained.
    • Publish an enabling defensive publication. Innovations and inventions may be placed in the public domain by means of enabling defensive publications (defensive publication). When an enabling publication is made, no one else can get a patent for the invention. The inventor and others share the benefits of the invention. Publication is the least expensive means of ensuring continued freedom of use of an innovation. It is also consistent with the open source model of software development.

    If no measures are taken to protect an invention, an inventor may find themselves the object of a patent enforcement action by a subsequent inventor. This could result in having to prove prior invention, or paying royalties.

  3. What is an enabling publication and why should the open source community be interested?
  4. An enabling publication is a written disclosure that describes the operation or implementation of an innovative concept in enough detail that a skilled individual in the same field could use or apply the concept. Such publications can then be used by patent examiners as prior art, to help determine whether or not applications they are considering for patent rights disclose new inventions. So, an enabling publication can help prevent a patent from being granted when an idea is not actually original to the patent applicant.

  5. Are enabling publications new?
  6. No — enabling publications have been a component of intellectual property (IP) strategies for many years. A common practice has been to patent their core innovative concepts and then publishing around their core innovative concepts to prevent others from patenting on top of them.

    However, the use of enabling publications in the open source community is very new. Used properly, they can be very helpful in keeping open source open. By properly documenting innovations developed in open source efforts, those innovations are available to patent examiners and prevent new patents from being issued on the published innovation. The resources required for an enabling publication are a small fraction of those required to file and obtain a patent.

  7. How can enabling publications be used to help the open source effort?
  8. We are encouraging the open source community to publish key innovative concepts in order to prevent patents from being granted to others later for those same ideas. These innovative concepts don't have to be fully implemented and demonstrated to work. An enabling publication can be filed as soon as you can fully describe how something would be implemented.

  9. Why hasn’t the open source community used enabling publications in the past?
  10. Enabling publications are a means of protecting intellectual property that was not well understood. Preparation of enabling publications does not require a patent attorney or agent, and is far less expensive than filing and prosecuting a patent application, so patent attorneys and agents had little incentive to educate the open source community.

  11. What are the expected benefits to the open source community of its participation in enabling publications?
  12. The use of enabling publications by the open source community could decrease patent litigation for open source projects by reducing the area of technology available for companies to obtain new patents while making innovations publically available for others to use to solve existing problems and to use as a basis for further innovations.

  13. If enabling publications can prevent a patent from issuing, what should we know about a patent to inform us as to what to publish?
  14. To receive patent protection an invention must be

    • New (novel). The invention can't be known, used or sold publicly prior to the “invention.” This is why publication in a publicly available database is an important element of enabling disclosures.
    • Useful. The invention must have a useful purpose and actually operate to perform its purpose.
    • Non-obvious. The invention must not be obvious to someone of ordinary skill in the subject field in the face of existing technology. This is usually the most difficult factor to determine.

  15. How do enabling publications prevent the granting of future patents?
  16. Enabling publications provide references to previous inventions (prior art references) to patent examiners for consideration when trying to determine whether a patent application describes a novel, useful, and non-obvious invention. Examiners can see the invention described and the date it was made publicly know (published). They can then use the description of the invention in the publication to compare to the invention for which a patent is being sought. If all the features of the invention can be found in a prior publication, or, if there is close enough match to make the invention of the subject application obvious, the application will be rejected.

  17. What would make an enabling publication prior art that prevents the grant of a patent?
  18. For an enabling publication to serve as prior art that causes a patent application to be rejected, it must be published in such a way that its publication date can be reliably determined. The description of the innovative concept must also be enabling — described in enough detail that a skilled worker in the field of the invention can implement the innovative concept without undue experimentation. Finally, unless the publication can be readily found by patent examiners, it is unlikely to be referenced when considering the validity of applications before them.

  19. What does it mean to be "enabling"
  20. An enabling publication describes an innovative concept in sufficient detail that a worker with ordinary skill in the field of the invention can make or use the innovative concept, without undue experimentation. Also, the publication must not rely on innovative concepts or discoveries that were not available at the time of the publication.

Examples of enabling publications

  1. Are there examples of how to write enabling publications?
  2. Yes, this web site has several examples of well-written, enabling publications. Please use them as a guide in writing your own enabling disclosures.

How to write enabling publications

  1. What should I know about writing enabling publications?
  2. Unlike patents, the rules for drafting enabling publications are extremely flexible. They can be written in many different formats, sizes, and styles. Typical enabling publications are one to three pages long and usually include figures and/or flow charts. Format and length are not the most important characteristics of an enabling publication. The most important thing to do is clearly and fully describe your innovative concept.

  3. What do enabling publications describe, in general, to be enabling?
  4. An enabling publication describes either an invention as actually implemented (actual reduction to practice), or the design for an invention based on sound principles of operation (constructive reduction to practice).

    An important principle here is that you don't need to wait until you're finished with a project to submit an enabling publication — you can do it as soon as you have a sound design. Also, you don't need to limit yourself to designs you decide to implement. You can submit enabling publications for sound alternative designs that you elect not to pursue for whatever reason.

  5. What are the elements of an ideal enabling publication?
  6. The key elements of an enabling publication are:

    • a title (up to about twenty words) that broadly describe the innovative concept
    • the background of the innovative concept — possibly one paragraph — describing the problem solved by the invention, or the need that it fulfills
    • what the invention does and the advantages it has over previous ways of doing the same or similar things, or, its benefits when compared to alternative designs that accomplish the same task
    • a description of the operation of the invention (how it works) — this description needs to be detailed enough that a worker of ordinary skill in the field of the invention could implement the invention without undue experimentation. Such a description is usually most complete when it includes diagrams showing the relationship of system components to each other, control or data flow diagrams, flow charts, user interfaces, or data structures

  7. What kind of innovative concepts can I document?
  8. There are many types of innovative concepts that can be considered for disclosure and publication. They include

    • systems inventions — collections of data (fields, protocols, data structures), software (GUI, code, algorithms), business rules, and hardware (computers, sensors, input/output devices, RAM, etc.) that act together
    • user interfaces
    • machines and hardware
    • methods (processes) — collections of steps — such as methods of making something; methods of using a system or apparatus; business methods; or methods of operating a system or apparatus

Strategies for enabling publications

  1. What are some strategies for protecting my innovations with defensive publications?
  2. In reviewing your products and their competitors, you should consider each of the following strategies to identify innovations or improvements that you may want to protect by means of defensive publications.

    • improvements to core technology such as improved optimization techniques in code generation, database operations, or encryption methods.
    • innovations you might normally document elsewhere, like in a paper or at a conference — remember you want PTO examiners to see these documents
    • anything you think others might patent
    • innovative concepts you see that link together well know ideas or patents
    • new ideas you have
    • new uses for existing systems and methods
    • alternatives to new products
    • potential technical standards
    • systems or methods that are along a path you believe an industry will traverse
    • unexpected uses of systems or methods by the users of those systems or processes
    • systems or methods that are along the path you believe the open source community will traverse