Librarian colleagues, sometimes I find I have been wrong, and when that happens, I feel like I owe it to the profession to confess and recant. Some statements I have made about (primarily academic) libraries, that I will take back, or at least modify heavily, here:
- “If you own the electronic version (or have safe enough funding to keep licensing it in perpetuity), it’s OK to throw out the physical version.”
- “Storage is almost as good as the stacks, for most items; the seating/collaboration space is more important than the shelf space.” (To be fair, I stand by this one, as long as you update your policies accordingly.)
- “Having a MARC view in your OPAC is user-hostile.”
- “Old engineering books—except for the classics, obviously—really need to be weeded out, for safety. So that you’re serving historians, maybe make sure there’s a copy somewhere in the country; but then it’s safe to chuck it.”
- “Why would you ever keep the previous edition of something, if nobody’s using it? Ugh.”
I was wrong, and I’m sorry. I’ve been bitten by every one of those statements over the last couple of years. (Several of them repeatedly.)
To be clear, my point here isn’t that libraries have to somehow anticipate my specific needs. 😁 Rather, in the course of my work, I’ve found a whole use case that had never occurred to me—or, clearly, a number of other librarians, either. It turns out, we need those older collections (in my experience, “older” currently refers to collections from the 1970s to the early 2000s) to be left intact/publicly accessible to fight patent trolls. And people outside of our libraries need to be able to touch those items and see those items’ MARC records, to do that—or else, we have to change our policies about getting involved in legal disputes.
It used to be, when a patent troll (the polite/fancy term for a patent troll is “a non-practicing entity”) came after a company, their only recourse, besides paying the troll’s licensing fees or settling the suit, was years and years in the courts. It was expensive and terrible. In the last few years, the US Patent and Trademark Office has implemented a new method for resolving these disputes: the Inter Partes Review (IPR). The short, I-am-not-a-lawyer summary: it lets the defending party have the chance to prove they had prior art publicly available before the non-practicing entity’s patent was awarded, thus invalidating their claim and resolving things far more quickly (often within 18 months, instead of multiple years).
Where libraries come in is the “public” part of that. If you can prove your article, book, conference paper, or whatever was in a library before the date of the patent, then, thanks to Interlibrary Loan, anybody could have put their hands on it! But, to prove it was physically in a library, you need the physical item. In general, the tribunal needs to see a scan of the salient parts of the item, ideally including a date stamp, plus (in the case of monographs/non-serial items) a copy of the MARC record—something that proves it was on the shelves of a library before the date of the patent.
Something I’ve said in the past, that I stand behind, without any editing required: “Microfiche and microfilm are the devil.” Most libraries don’t date stamp their fiches, for obvious reasons. They are, therefore, generally useless for legal/troll-fighting purposes. Similarly, it’s impossible to prove a date of public availability using a proprietary database, especially if the database was built after the patent was awarded.
Now, there are other ways to prove public availability. If the publisher has held on to shipping manifests from that far back, they can attest that the item was publicly available. If the item was online and captured by the Internet Archive before the non-practicing entity’s patent was awarded, obviously that counts. Those are not common occurrences, unfortunately, so this process often relies on libraries and librarians.
When the IPR process was first instituted, whenever an attorney was helping their client defend against a patent troll, they’d get their law librarian(s) to find the item in WorldCat and contact any library that held it in a physical format. (Side note: this is not what most law librarians are trained for. Known item searching, especially in engineering, and doubly-especially for conference proceedings, is an acquired skill; most law librarians seem to hate having to do this.)
The attorney or their law librarian would then talk someone in the holding library into writing a short legal document, attesting that their library had the item in the collection before such-and-such date.
It’s still done this way, by some attorneys and some libraries. But, over time, more and more libraries have developed “no we will not write these legal document” policies. You know how we librarians can be about medical and legal stuff, right? It’s not entirely unreasonable. And if the non-practicing entity wants to fight, you can get called in to a deposition, and it’s a whole big thing that libraries/universities/employers don’t want to deal with. I understand these policies, even if I find them to be unfortunate.
So, since it’s hard to find the items they need, especially in libraries that still allow employees to share their expertise to help resolve legal disputes, an increasing number of attorneys and their law librarians choose, instead, to contract with independent librarians who have the requisite science and engineering librarianship experience (or a willingness to learn), in order to 1) find these items; 2) acquire them through some combination of local libraries, ILL, and overnight shipping; 3) acquire and look over the items’ MARC records; and 4) write legal documents attesting to the items’ authenticity and dates of public availability. This is where I come in, and, I’m sure, other librarians with similar skills.
(Also, to answer a very reasonable question that comes up sometimes: none of my clients will ever offer me full employment, because if I worked for them I would be unable to sign these documents anymore. I could do every other step—locating items, writing documents, etc.—but a signature from someone working for the firm is pretty much useless. My signature is valuable, right now, because, in addition to my library and STEM expertise, I have no stake in how any of these cases turn out.)
It can be a pretty great gig, if the attorneys give their librarian-consultant enough lead time. It can be frustrating when time’s too short to acquire an item, or when an item just isn’t there anymore. It’s even more frustrating when that happens, because it’s so obvious to me, a non-lawyer/non-USPTO-IPR-tribunal-member, that, for instance, a paper presented at a conference had to have been publicly available shortly after the conference occurred, whether or not it is still on a shelf somewhere. Unfortunately, “it’s obvious” doesn’t hold up well as a legal argument.
More libraries are dropping old journals, monographs, and conference proceedings as they go electronic or try to save space, so these items are getting harder to find over time. Often, I need a specific edition of a monograph, and I learn that a particular library weeded it out (and didn’t remove it from OCLC, grumble grumble) when they acquired the newer edition. Further, many libraries are “modernizing” their OPACs and removing the MARC/Staff View links from their records, too, which makes it much more difficult to get the catalog record creation date. (I do look at other parts of the record, but the 008 is the most important field, for my purposes.)
Additionally, in my specific case (which I describe in order to point to a more general problem, rather than to shame any local libraries), there are two big academic libraries in my town, plus a big public library that used to have a Science & Technology department.* Between those three libraries, the items I need are often here in town, but I can’t always get at them: even though both academic libraries nominally serve the public, their older stuff is in storage. Neither officially commits to getting items from storage for the public, for alumni (I’m an alum of both schools), or for their Special Borrower Card holders (who pay for those cards!); in practice, one library has always pulled items from storage for me, for in-library use, which is all I ever need, while the other consistently refuses, even when I offer to buy a Special Borrower Card.
So this is where I learned not to say “storage is a great alternative,” because everything that second academic library puts in storage? It’s effectively gone, from my perspective as an alum and member of the public. (And if I hit the generally-more-flexible library on a bad day? I might get turned down. Policy-wise, neither’s a guarantee!)
Now, they will send some items (monographs, but apparently not journals) down the street to the public library if they’re requested through interlibrary loan; so, if my client has given me enough time, a monograph in storage is not really gone. But it’s still an insufficiently-thought-out policy. Especially since, when I borrow an item from the public library, it leaves the protection of the university’s buildings and the public library’s buildings (because the academic library down the street has nicer scanners 😁); it wouldn’t have to ever go outside, if they would just grab it from storage for members of the public, or at least Special Borrower Card users, to use in their library.
So. This job keeps getting harder due to weeding and weird library policies; and it may eventually become impossible, which is a bummer: if the USPTO IPR process is effective enough, patent trolling might become unprofitable! This is something librarians should care about!
Again, my point isn’t that you, my librarian colleagues, need to make my job easier. Honestly, it would be better if libraries would just change their policies and make staff time available to write these legal documents, as part of our (libraries’) commitment to keeping intellectual property law working the way it was intended to. Then you wouldn’t need MARC in your OPAC, and having things in storage where the public can’t get them … um, would still be a bad policy, but it would do less harm, anyway.
So, please, change your policies, and write those legal documents! Don’t hold off on my account! (I don’t anticipate doing this forever. I’m looking for at least part-time employment, nowadays, anyway. If this post puts me out of business, because libraries suddenly reverse course on the whole “don’t write legal documents” policy thing, all the better!) I can get you started on how to write those documents, if that’s the holdup; I’ve got all kinds of boilerplate text.
* If anyone from that local public library is reading this, and you find out that department’s being put back together, please let me know! All the fun parts of engineering and science librarianship, plus I could select pop science books, plus I’d probably get to run STEM programs for a whole bunch of different age groups? Yeah, sign me up for that! (back to the text)