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Aug 31 / Clayton Hayes

Elsevier: Patent Troll as well as Publisher?

It would seem that I am doomed to continue writing about Elsevier. It was announced yesterday that the academic publishing giant had been awarded the patent for “online peer review system and method” by the United States Patent and Trademark Office. The full patent is available here, but the abstract for the patent reads about as vaguely as possible:

“An online document management system is disclosed. In one embodiment, the online document management system comprises: one or more editorial computers operated by one or more administrators or editors, the editorial computers send invitations and manage peer review of document submissions; one or more system computers, the system computers maintain journals, records of submitted documents and user profiles, and issue notifications; and one or more user computers; the user computers submit documents or revisions to the document management system; wherein one or more of the editorial computers coordinate with one or more of the system computers to migrate one or more documents between journals maintained by the online document management system.”

This patent is concerning for a few reasons. First and foremost, I am reminded of the case of Soverain Software in the mid-2000s to early-2010s. Soverain was (and perhaps still is) a “patent troll,” a company whose entire business model relies on the filing of patents in order to extract money from other entities who are using technologies covered by these patents. In the case of Soverain, the company owned a patent on the online shopping cart, a near-ubiquitous bit of online shopping technology. Soverain would make its money by suing any company whose online store used an online shopping cart, including such giants as Amazon. In the end, Soverain bit off more than they could chew when pursuing legal action against online retailer NewEgg, whose lawyers essentially showed that some of the key patents behind the suit were invalid. You see, a patent is only valid if the technology being patented is new; if someone came up with it before you (which is known as the existence of “prior art”) then you can’t legally patent it. NewEgg showed that another entity had come up with the idea of an online shopping cart before Sovrain’s patent was filed, thereby invalidating it.

What does this have to do with Elsevier’s patent? Well, as you may suspect, many in the scholarly publishing community have reacted to the patent with claims that prior art for online peer review exists. Martin Paul Eve (Professor of Literature, Technology, and Publishing, Birkbeck, University of London) scoffed at the notion that no prior art exists, and David Crotty (Editorial Director, Journals Policy, Oxford University Press) replied to Eve’s tweet by pointing out that much of what is claimed to be innovative in Elsevier’s patent is covered by the system developed by the Neuroscience Peer Review Consortium. And, though Eve indicated that he thinks the patent may be legally unenforceable, he is also concerned that other entities may not have the resources to legally challenge Elsevier’s claims.

Therein lies the problem. Even if the patent isn’t legally enforceable, Elsevier is a very large academic publisher who is not afraid to use its lawyers when it feels that such action is necessary. Much of the innovation happening in peer review workflows is a result of smaller entities, entities that do not have the resources to fight a legal battle against Elsevier even if it was likely that they would win. The difference between this case and the Soverain case above is that the scholarly publishing world does not have a NewEgg to push back against Elsevier’s claims. Elsevier can essentially run roughshod over any other scholarly publishing entity who wishes to implement online peer review. Whether it does remains to be seen but, as I mentioned above, Elsevier’s track record is cause for concern.

There is another, possibly more concerning issue, though, one which Brandon Butler (Director of Information Policy, University of Virginia Library) called out on Twitter and one that has been a recurring theme in this blog as of late. Elsevier has begun to hedge its bets in the event that Open Access (OA) publishing becomes standard practice for academics. Since a movement towards OA  will presumably make control over the end result of the publishing process less profitable, Elsevier is seeking to profit off of the rest of the scholarly publishing pipeline. Several months ago, Elsevier acquired the OA repository SSRN; the depositing of pre- and post-prints into SSRN has been an essential step in the publishing process for authors in a wide range of subject areas. Now Elsevier hopes to profit off of the peer review process as well. And, as was the case with their acquisition of SSRN, this latest move by Elsevier has me worried as to what they might do next.

One Comment

  1. Stuart Ratner / Sep 1 2016

    Thanks for posting on this patent, which does open some nasty possibilities. Fortunately, there is little danger of rapacious behavior on the basis of this patent, for several reasons.

    1. The abstract of a patent gives little indication of the patented invention. It is merely a collection of key words for search engines, strung out into sentences. it has a strict word limit, and is written at the time of application, without any knowledge of what the actual allowed claims will be. The actual granted patent covers a much more narrowly defined invention than the one that seems to be described in the abstract.

    2. You can actually determine the maximum scope of invention ownership by reading the broadest claims. Claim 1 is such a claim. It has dozens of elements, and someone would have to make or use a system that includes every single one of those elements before they can successfully be sued for infringement. Long claims like this, with a multitude of elements, are usually the result of an examination in which the applicant had to overcome rejections are based on lots of prior art. I don’t know the details of rival systems, but it is unlikely that any of them include all of these elements, and so a successful infringement suit is unlikely.

    3. Your posting assumes that there are only two alternatives: paying off a patent holder or spending years in court to invalidate the patent. Fortunately, there are many fast and relatively inexpensive methods of invalidating patents with USPTO proceedings. Reexaminations and post-grant reviews are among them. Reexaminations and reviews on the basis of prior art missed by the examiner are the easiest and simplest to obtain, because this is where examiners are most likely to make mistakes. I suspect that competitor companies are at this moment analyzing the allowed claims, the chances of infringement, and the prior art. The links you posted, discussing prior art that might have been missed by an examiner, could be very useful. You should copy them to any publisher that you think might be threatened by this patent.

    I’m no apologist for Elsevier or its practices, but there are alternative, non-nefarious reasons for patenting this invention. Maybe they came up with a clever twist on computerized peer review and don’t want competitors to rip it off. Or maybe they would like to market the system to competitors, and make some money that way.

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