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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 '21 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 '21 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 '21 at 16:01
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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.

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    Welcome to Ask Patents. Thank you for your well thought out answer.
    – Eric S
    Nov 26 '21 at 15:21

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