US Patents Consultation
The British Library Board has given its approval in principle for the disposal of the following:
US Utility Patent Specifications on paper 1859-1999
This proposal is in line with the British Library De-accessioning Policy and is consistent with the terms of the British Library Act 1972.
This was subject to a consultation that ended on Friday 23 May 2008.
1. DESCRIPTION OF THE MATERIAL CONCERNED AND THE RATIONALE FOR ITS DISPOSAL
1.1 A patent is a bargain between the state (in this case the USA) and the inventor or owner of the invention, which provides the inventor with the sole right to exploit the invention for a limited term (now 20 years) in return for public disclosure: disclosure is in the patent specification. The legal document is the patent grant “delivered or mailed on the day of its grant, or as soon thereafter as possible, to the inventor’s attorney or agent if there is one of record, otherwise directly to the inventor.”
1.2 The British Library’s collection of US utility patent specifications had its origins in the Patent Office receipt of US paper copies of Utility Patent Specifications by exchange: these became the property of the British Museum, when the Patent Office Library became a part of the British Museum in 1962 as the National Reference Library of Science and Invention. In provenance terms, there are three tranches of material: 1850-1962 acquired by the Patent Office, becoming the property of the British Museum in 1962; 1962-1973 acquired by the British Museum; 1973-1999 acquired by the British Library. The last specification acquired in paper was No. 65009554 on 28 December 1999.
1.3 We propose to keep the paper specifications up to and including 1858. This consists of a presentation set of volumes covering 1790 to 12 October 1858, given to the Patent Office by the US Patent Office in September 1900.
1.4 The US Utility Patent Specifications occupy 4.2 linear kilometres of shelving (c.6 million items)
1.5 The British Library Board agreed at its meeting on 20 May 2003 to stop taking in further paper copies and to rely instead on the digital version, and “to relegate this material to low-use storage in the short-to medium term while keeping the question of the eventual de-accessioning…under review”.
1.6 There have been no requests for US Utility Patent Specifications on paper since the decision in May 2003, except for one request on 30 September 2004.
1.7 The run is incomplete, lacking many “correction certificates” and some 800 documents are missing. It is also in poor condition as it was on open access at Holborn and could be photocopied without supervision.
1.8 There is guaranteed access to both paper and electronic copies at the National Archive and Records Administration (NARA), Washington.
1.9 Although there is a free Web-based set of US patents at http://www.uspto.gov/patft/index.html, hosted by the US Patent and Trademark Office, we propose to keep a microfilm and complete DVD backfile 1790 to 2000. We will continue to receive US granted patents on DVD and US applications on DVD (this series started in 2001).
1.10 The life-cycle cost of storing this now largely unused material is high. The storage overhead alone is £7.90 per metre, amounting to £33,180 per annum.
1.11 Currently, these paper patents are intended to be moved as low-use materials into the Additional Storage Building at Boston Spa. The Library wishes to avoid both the cost of the move of this material (at £5 per metre = £21,000) and the use of space intended for low-use materials for, effectively, no-use materials.
2. CONFORMITY WITH BRITISH LIBRARY DE-ACCESSIONING POLICY
2.1 The full text of the British Library De-accessioning Policy can be consulted online. This sets out the constraints contained in the British Library Act 1972 on the British Library Board’s powers of disposal in respect of two categories of collections items: those transferred to the Library from the British Museum under section 3(1) (a) of the Act; and those subject to trusts or conditions. It also sets out supplementary policy approved by the Board in February 2003 in respect of UK Legal Deposit Material, Colonial Deposit Material, Duplicate Material, Foreign Material, and Unique Material.
2.2 Since the National Reference Library of Science and Invention was incorporated into the British Museum’s Department of Printed Books, the 1859-1973 run of US Utility Patent Specifications falls within the restriction of 3(1) (a) of The British Library Act (1972), which relates to articles which “formed part of the collections in the Museum’s Department of Printed Books, Department of Manuscripts and Department of Oriental Printed Books and Manuscripts”: we are not proposing that anything printed before 1850 should be de-accessioned, and we will keep both a microfilm and DVD backfile covering 1790 to 2000, and thus fulfil the requirement of a “photographic (‘or a process akin to photography’) copy [to be] held in the collection”.
2.3. These items are not subject to any trusts or other conditions.
2.4 Under the supplementary de-accessioning policy of 2003, the section on ‘Foreign Material’ relates: “In cases where appropriate service surrogates exist and, at the time of disposal, the Library is satisfied in writing through direct contact with an appropriate organisation that the long-term preservation of the original documents in the country of origin is safeguarded, the Library may dispose of the originals. This decision is taken in the context of the full cost of retaining the item, including storage and preservation costs (life-cycle costing).” See Para 3.3 below.
2.5 The Treasury solicitor has advised that the Board itself must decide upon recommendations for disposal for those items inherited from the British Museum, because of the provisions of Section 11(4) of the Schedule to the British Library Act. This power cannot be delegated to the Library’s Executive. For all material acquired since the formation of the Library, the Board has resolved that it should approve all significant acts of de-accessioning. “Significant”, in this context, covers significance in terms of the specific items under consideration (as defined, for instance, by their monetary value or their research importance), and in terms of the size of the disposal exercise, the latter category to include proposed disposal of original formats and reliance upon surrogates.
3. DUE DILIGENCE & CONSULTATION
3.1 After the Review of Patent Collections and Services in the British Library (BLB 00/73), September 2000, a Patent Provision Consultative Working Party was set up and one of their recommendations was “to dispose of foreign paper patent documents where identical material is held digitally after it is ascertained that there will be no loss of information” (Report on ‘New Strategic Directions’ of 2001).
3.2 The surrogates of the paper patents were investigated in 2003: it was found that the volumes on paper pre-1837 were significantly different from the DVD and microfilm, and hence we are proposing to retain the paper format up to 1858. Of the post-1858 materials, the paper set is the most incomplete, lacking many correction certificates and a run of some 800 documents. The DVD versions are the most complete with very few missing documents or poor quality images. The US Patent and Trademark Office lists some missing patent specifications and amendments http://www.uspto.gov/patft/help/imiss.txt: we propose that, if de-accessioning is agreed, we would work with them to ensure they can provide digital versions of missing patents and amendments which we held, and that NARA paper run is as complete as possible.
3.3 We will seek written assurance from the United States Patent and Trademark Office and the US National Archives & Records Administration (NARA) on the long-term access to and preservation of the paper patents.
3.4 Internally, STM, American Collections, the History of Science curator, Philatelic and Map Collections have been consulted and have raised no objections.
3.5 We propose a 12 week consultation, run according to the Cabinet Office Guidelines (2004) to include the views of the following:
- Department of Innovation, Universities & Skills (DIUS)
- UK Intellectual Property Office
- Intellectual Property Institute
- Institute of Patentees & Inventors
- Chartered Institute of Patent Agents (CIPA)
- CILIP Patent and Trademarks Group (PATMG)
- PATLIB UK
- Royal Society
- Royal Society for the Encouragement of Arts, Manufactures & Commerce
- Wellcome Library
- The British Society for the History of Science
- Centre for the History of Science, Technology and Medicine, Imperial College
- Centre for the History of Science, Technology and Medicine, University of Manchester
- Faculty of Science, Culture and Communication, University of Bath
- Identified UK specialists in the history of intellectual property
- The British Association of American Studies
A sub-group of the Executive Team will then make a decision based on weighing any objections and risks against life-cycle costings.