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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?

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    Are the figures turned into patent format figures? Are references in the text to elements in the figures by reference numbers? What percent of the text is from the paper verbatim? Can you tell us the general field on the invention? Where would the application be filed?
    – George White
    Oct 9 at 19:19
  • They did not copy the figures into patent format figures. The paper contained already references to the figures, besides that the attorneys have not added any further references and kept the captions from the paper manuscript. Excluding claims and abstract, the patent has 60% verbatim copies (measured by words, neglecting cosmetic changes). Unfortunately, I may not disclose the general field on the invention. The application would be filed at the EP. Oct 10 at 15:59
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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.

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  • Thanks. As outlined in my answer to George White's answer, they have added their own prose as well, but the main part of the application (60%) consists of the paper manuscript. Also thanks for your assessment of the copyright case. I agree, we are the creators of the document and the figures. Nevertheless, I feel like I should double-check with the editors on this. Oct 10 at 16:01

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