Plaintiffs sued McDonnell Boehnen Hulbert & Berghoff (MBHB) and Schwegman, Lundberg & Woessner (SLW) for doing what patent firms around the country regularly do—copying articles from scientific and medical journals, and submitting these copies in patent applications as evidence of prior art. The law firms were attempting to comply with the U.S. Patent and Trademark Office (PTO) Rule 56, which requires patent applications to provide all prior art references material to patentability. Failure to provide such references can render any resulting patents unenforceable and expose the patent attorneys to sanctions for ethics violations.
“The model for publication is shifting. This looks like an effort by publishers to squeeze some more juice out of the lemon,” says Prof. Peter Menell of University of California, Berkeley and Stanford Law Schools. “It sounds like publishers see this as a new revenue stream. There are a half-million patent applications per year, and they figure they can make some money here.”