Fair Use of Copyrighted Articles in Patent Applications?

Several recent federal court decisions involved an unusual convergence between two forms of intellectual property:  patents and copyrights.

At issue was whether it was a violation of copyright law to include copies of scholarly articles with patent applications.

The plaintiffs in the cases were the American Institute of Physics and two publishers of scientific journals:  John Wiley & Sons and Blackwell Publishing.

The defendants were patent law firms that prosecute applications before the US Patent and Trademark Office (USPTO) and foreign patent offices.

The patent lawyers had submitted copies of articles published by the plaintiffs as evidence of “prior art” in connection with patent applications.  The lawyers had also distributed copies of the articles to their clients and to other patent attorneys working on domestic or foreign applications.

In the Minnesota federal court case of American Institute of Physics and John Wiley & Sons, Inc. v. Schwegman, Lundberg & Woessner, P.A., a patent law firm had downloaded 18 of the defendants’ articles — mostly from the USPTO’s website.  The firm also placed copies of the articles on its intranet site.

The plaintiffs asserted that this copying constituted copyright infringement.

The judge disagreed, and granted summary judgment for the defendants.

In similar cases from Texas and Illinois, the plaintiffs complained that the patent lawyers not only engaged in unauthorized copying but also directly profited from their copyright violations by charging clients for the copies.

The court in the Texas case granted summary judgment for the defendants;   the Illinois case has not yet been decided.

A fourth case in Kansas was dismissed after the defendant obtained a license to use the copyrighted works.

In all of these cases, the defendants invoked the “fair use” doctrine.  Under US copyright law, certain acts that would otherwise constitute infringement are considered “fair use.”  Examples of fair use include “criticism, comment, news reporting, teaching[,] or research.”

The defendants argued that their copying was essential to the prosecution of patent applications, which includes the obligation to disclose “prior art.” In addition, the defendants argued that their use of the copies did not affect the market for the plaintiffs’ articles.

The plaintiffs have announced their intention to appeal the decisions against them.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

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