About this Author
DBL%20Hendrix%20small.png College chemistry, 1983

Derek Lowe The 2002 Model

Dbl%20new%20portrait%20B%26W.png After 10 years of blogging. . .

Derek Lowe, an Arkansan by birth, got his BA from Hendrix College and his PhD in organic chemistry from Duke before spending time in Germany on a Humboldt Fellowship on his post-doc. He's worked for several major pharmaceutical companies since 1989 on drug discovery projects against schizophrenia, Alzheimer's, diabetes, osteoporosis and other diseases. To contact Derek email him directly: Twitter: Dereklowe

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March 5, 2012

Department of Lots of Nerve (Patent Applications Desk)

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Posted by Derek

When you file a patent application, there are plenty of things that the PTO wants you to include. One of the big ones is prior art: you're supposed to disclose all the relevant inventions close to yours that you're aware of, in order to show how your discovery is different. Prior art is naturally to be found in other previous patent filings, and it's also to be found in journal articles and other such public disclosures. If you don't submit relevant prior art that is known to you, your patent application gets into a lot of trouble eventually (and the more worthwhile your invention, the greater the chance becomes of that catching up with you).

So in light of this, you might find it interesting that some of the large scientific publishers are suing over all this. Why? Well, these lawsuits (filed by Wiley and by the American Institute of Physics) allege that the accused law firms violated copyright by submitting unauthorized copies of journal articles with their patent applications.

As that post at PatentlyO goes on to show, the plaintiffs seem to also be very interested in the internal copies of articles that the law firms are making. But I don't really see how they're going to make either of these stick. I mean, I tend to think that a lot of things are "fair use", but aren't these? This really looks like an act of desperation - the traditional scientific publishing model must be in even worse shape than I thought.

Comments (15) + TrackBacks (0) | Category: Patents and IP | The Scientific Literature


1. SP on March 5, 2012 2:12 PM writes...

They do often put those "Printed on dd/mm/yy for username" on saved pdfs, but seriously, they're going to try to use that to track down people passing around documents for internal use? So much for emailing a colleague an interesting article to take a look at- glad to see they're committed to the advancement of knowledge as opposed to making a buck. ("Oh, but we can't continue our mission of spreading knowledge without making all the bucks we might possibly be entitled to!" Please. More deadweight losses, that's just what we need.)

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2. tim on March 5, 2012 2:36 PM writes...

These guys sure know how to run a charm offensive, don't they?

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3. tim on March 5, 2012 2:36 PM writes...

These guys sure know how to run a charm offensive, don't they?

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4. CMCguy on March 5, 2012 2:47 PM writes...

Wonder if they will go after all the Drug companies next? Not sure if mandated or simply common practice but inclusion of full copies of all Literature Citations in Regulatory Submissions is standard procedure every place I have been (and usually means 100s of papers per submission). Before pdf cataloging or on-line access came in vogue don't know how many times I had to do an urgent trip to the library to obtain a clean copy of an article for Filing because had poor quality reproduction (blurry or cock-eyed pages), missing a page (or two), or only hard copy contained notes in margins or other mark-ups from someone.

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5. Tim on March 5, 2012 2:49 PM writes...

Articles from ACS include rights to submit to regulatory agencies

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6. Anonymous on March 5, 2012 2:51 PM writes...

This oughta go a long way towards convincing people of the evils of open access publishing.

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7. pete on March 5, 2012 5:07 PM writes...

What about if we let 'em do it PROVIDED they split the proceeds with authors of the papers in question. I'd say a fair split would be 85% authors : 15% publishers -- since this is really all about conceptual and material advances by scientists, as opposed to the functions of a journal printer.

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8. WB on March 5, 2012 8:44 PM writes...

In the near future: " Hey look, Journal XX referenced an article from OUR Journal YY without paying us!!! Let's sue them for copyright infringement!"

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9. Morten G on March 6, 2012 5:20 AM writes...

6. "This oughta go a long way towards convincing people of the evils of open access publishing."

Huh? Wiley isn't exactly open access.

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10. Tom Womack on March 6, 2012 5:42 AM writes...

They're asking patent-law firms for a sum which is a medium-sized multiple of $32 (that is, to pay the off-print charge for a new off-print for each paper they submit). On the whole I don't think this is /that/ unreasonable an application of the Principle of the Deep Pocket.

I don't know whether the culture of the US patent office is such that they would be happy with patent filings with 'also, get an intern to download and print the following DOIs from the library to which you doubtless have full access'.

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11. Tom Womack on March 6, 2012 5:49 AM writes...

'they're going to try to use that to track down people passing around documents for internal use'

They're initially going to try to use that to track down people passing around documents for internal use *at law firms* - that is, they're trying to get patent-law firms to acknowledge that they're scientific libraries and should buy site licences to the journals.

I suppose I think that patent litigation is not in fact the purpose of scientific publication, and if you can charge patent lawyers, who have a really remarkably different underlying cost-benefit model to the general researcher - their 'aha' may save the client tens of millions rather than letting the researcher write an interesting grant - you possibly should.

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12. Anonymous on March 6, 2012 8:36 AM writes...

I know Morten, I was being sarcastic. Big publishing houses who oppose open access journals, then resort to this type of behavior are not doing themselves any favors. They certainly don't come off as caring about science over money.

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13. Patent Plagiarism on March 6, 2012 10:25 AM writes...

On a related note, I had about 100 lines of text and equations copied verbatim from one of my published articles into a US patent. I accused the named inventor and his institution of plagiarism. That institution investigated itself and determined that it is “standard practice” for lawyers to plagiarise published materials for patent creation. WTF – I need a lawyer!

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14. nase on March 6, 2012 10:30 AM writes...

It's worth mentioning that the USPTO has taken the same position as Derek about this being fair use:

Not exactly binding precedent, but I guess it's something.

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15. pay pay pay on March 7, 2012 11:43 PM writes...

Well, i've seen this mob around...

We have to pay for internal use of papers we download from our ScienceDirect subscription & other subscriptions, heck, apparently even copying text from a journal article and then CITING it is copyright infringement. Yeesh.

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