Scientific journals are threatening to sue inventors and law firms over the academic studies that are part of a typical patent application. Now, in an unusual memo, the US Patent Office has suggested that inventors can disregard the warning.
The controversy began when journal publishers like the Nature Group said that they wanted to be paid whenever a copy of one of their articles is submitted to the patent office.
Articles from Nature and other journals are routinely included in the “prior art” filings that inventors submit to show their invention is indeed new. These filings often include dozens of such articles and are required by law.
The publishers’ demand for a license could increase the cost of obtaining a patent which already runs to tens of thousands of dollars.
In response to an outcry from patent lawyers, the patent office last month issued a memo stating that it is “fair use” for inventors to copy the articles for submission to the patent office.
In the memo, General Counsel Bernard Knight noted that inventors were copying the articles as part of a legal duty and that the practice had no impact on the market for the original articles.
The publishers’ attempts to wring more money out of the journal articles comes at a fateful time for the industry. The university libraries who are their main clients are increasingly upset at having to pay for expensive bundles of journals that contain products they do not want. And in what The Economist has dubbed the “Academic Spring,” many of the professors who produce the content in the journals are promoting a non-profit alternative.
The attempt to charge patent applicants is part of a larger effort by the journals and other copyright owners to obtain new revenues through requiring organizations to pay for internal copies they make.
The issue raises the question of whether such fees are fair or are instead an undeserved second bite of the apple.
The Copyright Clearance Center, an organization that collects royalties on behalf of publishers, says that charging patent applicants is valid because lawyers and inventors do not have a license to reproduce the journals.
Frederic Haber, the general counsel of the CCC, says that law firms’ practice of replicating articles for a patent application is similar to when a big company photocopies a newspaper article for all of its employees. In both cases, he says, someone should pay for the additional reproductions.
In the case of the patent applications, Nature also wants law firms to pay to provide copies of journal articles to clients and other lawyers.
Patent expert Dennis Crouch, who first reported on the story at Patently0, estimates that the scheme could be worth $50 million if lawyers agree to the license.