Verbatim copy from paper draft in a patent application

Question

I am working as scientist for a university in the EU.

We have submitted a paper manuscript to a renowned journal. The manuscript got reviewed and finally accepted. Already upon submission, we asked the editor to withhold the publication until a corresponding patent application is filed.

For the corresponding patent application, we have provided the patent attorneys a draft of our manuscript and a few notes. The patent attorneys now provided us with a first draft of the patent application. I noticed that almost the entire manuscript draft was copied verbatim into the patent draft, including the figures. I reckon that the attorneys want to utilize all material they have at hand for the patent application. However, a 1:1 copy appears very lumpen to me.

I wonder: is it common practice to copy entire passages and figures from publication drafts into patents? Does this not induce a copyright infringement (we will publish in an open access journal though)? How should I proceed?

Answer 1

It is uncommon to copy the text of the paper into a patent application. I, in fact, advise against it when somebody approaches me to draft a patent application.

The contents of a patent application are both technical and legal. The copy of the paper would, at most, take care of the technical part, but not the legal part of a patent application. Besides, oftentimes a paper does not include some details of the entities or processes because they are not necessary in academia, but need to be part of the description of the invention in a patent application. Careless drafting of the patent application may lead to a refusal, or a narrower scope of protection.

I am not very knowledgeable about copyright matters but in any case you hold the rights of your paper and you will be the applicant in the patent application, I cannot see where the problem might be in that.

Answer 2

In my experience there are some scenarios were 1:1 copy of the clients description makes sense. Here are some examples:

• The client is actually not interested in a patent but wants to secure the filing date.

For example, a scientist (maybe with a non-patentable subject-matter) who wants to prove that he was the first one with the particular solution.

• The client and/or the attorney has only a limited time to draft a patent application. Depending on the available time the attorney could decide to hand in only the (almost) 1:1 copy of the clients description or to hand in a set of claims with the 1:1 copy as the patent application. The goal of the application is to secure the filing date of the given subject-matter for a later application.

For example, the client is a speaker at a conference and he wants to make sure, the content of his speech will not hinder a future-application. He may use his handout/draft as a first patent application with a filing date before the date of the conference and file a second application within a year taking priority from the first application. Any added subject-matter will have the effective date of the filing date from the second application.

In general, a client could find verbatim copies of paragraphs/blocks of his description in the application. Simple reasons for this might be that a client accepts an application with a higher probability if he find his ideas and his wording in the document.

A further reason could be that an attorney wants to protect himself from being sued by the client. Basically it is pretty easy to prove that he missed a sentence or a feature. With a policy of just adding text without deletion he makes sure, he has everything in it, in the same context as the client wanted.