Statutory Invention Registration: Defensive Patentability

Congress recently enacted legislation that provides for Statutory Invention Registration (SIR) as an alternative for an inventor who does not want to obtain a patent. To obtain a SIR, an inventor must file a complete application for a patent accompanied by a waiver of the rights obtained under a patent grant. This waiver of rights takes effect when the SIR is published and leaves the inventor with only defensive protection. The inventor completely loses his offensive rights, i.e., the right to exclude others from making, using, or selling the invention. In exchange for an inventor's right to exploit his invention, the SIR program provides the inventor with an abbreviated prosecution process which is more expedient and less costly. The SIR program also replaces the Patent and Trademark Office's (PTO) Defensive Publication Program, and provides an effective reference date equal to the date the SIR application is filed instead of the date the SIR is published. The SIR program will, therefore, be of considerable benefit to governmental agencies and organizations who publish research results for defensive purposes, but of little benefit to individuals and organizations who seek commercial profit from their inventions.