Yes, it is apparently possible – Elsevier just did it.
Elsevier is one of the largest science and medical publishers in the world. Prestigious journals, such as Cell and The Lancet, are amongst its products. Over the years, it has been the subject of a number of criticisms, including its pricing regime (see here, here and here), its strong stance against academics posting their own articles on university archives (see here and here) and other platforms (see here and here), and the sale of open access articles (see here).
On August 30, 2016, the United States Patent and Trademark Office granted Elsevier a monopoly over the “waterfall process” of online peer review. This is a process whereby, upon rejection, a different journal (chosen through a comparison of the submitted articles of the author and the published articles of the suggested journal) is suggested to the author for resubmission. The referral occurs automatically, and upon the author’s consent, the article is immediately forwarded to the recommended journal.
Since the patent grant, much of the commentaries have been negative. Many people immediately went on social media to express their shock and discontent. One tweeted a sarcastic question of whether there is prior art to “online peer review”. The same person also expressed his concern that less resourceful entities cannot legally challenge this patent. Although Tom Reller from Elsevier tweeted in response in an attempt to calm fears, it was ineffective. The Electric Frontier Foundation rated it Stupid Patent of the Month. Clayton Hayes’s post on Scholars Cooperative compared this move by Elsevier to be similar to that of a patent troll. (Harsh!)
In an age where academic publication is trending towards open access, coupled with the criticisms of Elsevier’s anti-open access practices, the passionate anger from the public is understandable. However, as heated emotions calm, it is important to take another look at this patent more cool-headedly with two questions in mind: (1) is the patent valid and (2) what is its point if it is valid?
On the issue of validity, the commentaries focus on novelty. It has been pointed out that the waterfall process is what others refer to as “cascading peer review” and has been used by others prior to Elsevier’s patent filing. However, a closer look at the patent makes it apparent that Elsevier acknowledges that there are existing journal referral practices. Elsevier notes that what is lacking is a “more flexible and convenient” system, such as referrals to non-sister journals. Reading the patent holistically, it appears that the novel aspect of Elsevier’s invention is an improved and automated system of the online cascading peer review process. Examining the broadest claims, it is evident that they contain many elements, including the novel improvements on the cascading peer review process, thus making the scope of the patent narrow. Overall, it appears that this patent satisfies the novelty requirement.
The more interesting issue is whether the invention is truly “inventive”. In my opinion, expanding the cascading peer review process to non-sister journals and automating the process through computer programs seems rather obvious. However, not being a “person having ordinary skill in the art”, I am not qualified to make any judgments. It would be interesting to hear expert opinions on this issue.
Finally, assuming the patent is valid, is there any value in it? With all the criticisms Elsevier has been under and the Cost of Knowledge boycott against Elsevier, this move was immediately perceived as hostile and anti-open access. Elsevier was compared to a patent troll because people imagine the publisher would use the patent to block out journals with less resources (especially the open access ones) by suing them for using a similar cascade peer review process. So in terms of company image, this move was damaging. However, considering the claims of the patent are very specific, it should be easy for others to work around the essential elements of the claims, making it hard for Elsevier to enforce the patent. Maybe Elsevier never intended to block out other publishing entities. Maybe Elsevier wants to generate revenue by licensing its waterfall process to other entities. If so, it should not be too difficult to work around the narrowly claimed invention. With the anti-Elsevier attitude many academics have, would other publishing entities want to license from Elsevier? If not, was the cost in money and public image of getting this patent worth it? We can only wait and see.
Sue (Zhonghui) Fei is a JD Candidate at Osgoode Hall Law School. Sue is currently enrolled in Osgoode’s Intellectual Property Law Intensive Program. As part of the program requirements, students were asked to write a blog on a topic of their choice.