Patent Attorneys Sued For Copyright Infringement

Zordak writes "Patent blogger Dennis Crouch writes on Patently-O of a catch-22 for attorneys. Patent attorneys are required to submit all prior art that they know of to the patent office. Failing to do so is an ethical violation, and can result in a patent being invalidated. But now the Hoboken Publishing Company and the American Institute of Physics are suing a major patent firm for copyright infringement, because they submit articles to the patent office without paying a separate royalty."

Comments

Summary is misrepresenting things...

[msauve]

No one is being sued because they included copyrighted material in a patent application, as the summary claims.

From the article, "Earlier this year, the US Patent Office issued a memo indicating its belief that copying and submitting copyrighted documents should be considered a non-actionable fair use."

The plaintiffs agree. Their complaint is that law firms make and distribute multiple copies of the copyrighted works used in the patent applications: "The crux of what our case deals with is the internal copying by the law firms after they have one copy in their hand. . . . Those copies are not licensed, and the patent office didn't take a position on whether or not fair use would apply to those copies."

Re:Summary is misrepresenting things...

[gstrickler]

Two issues with that. First, the actual complaint states:

14. In connection with researching, filing and prosecuting certain patent applications, McDonnell made and/or distributed to the United States Patent and Trademark Office ("PTO"), and perhaps others, unauthorized copies of copyrighted articles from plaintiffs' journals Such unauthorized copies were used for the commercial benefit of defendants and their clients.

15. Upon information and belief, defendants made (a) additional copies of the copyrighted works that defendants included or cited in their patent applications to the PTO, including those identified on Schedule A, and (b) copies of plaintiffs' copyrighted works that defendants considered in connection with those applications, but did not ultimately cite or provide to the PTO. Plaintiffs cannot know the full extent of defendants' copying without discovery. Apart from the copying of plaintiffs' works accompanying the patent filings described above, this internal copying infringes plaintiffs' copyrights.

Which asserts that the copies made for the USPTO are "unauthorized", which conflicts with the previous the USPTO memo clearly indicating it is fair use. It also says "perhaps others" and that they "cannot know the full extent of defendants' copying without discovery", indicating they have no actual evidence of other copying, only suspicion of other copying, and that this lawsuit is a fishing expedition. That alone may be sufficient for dismissal.

Further, the plaintiff's attorney states "The crux of what our case deals with is the internal copying by the law firms after they have one copy in their hand. . . . Those copies are not licensed, and the patent office didn't take a position on whether or not fair use would apply to those copies." Here they basically acknowledge that item 14 in the complaint is irrelevant.

Perhaps most important is the concept of "access to the information" vs keeping a copy with the filing (the copy sent to the USPTO and the copies the attys are certain to keep for themselves and/or the client). Since access to the information in this case is only by subscription, physical copies of the relevant portions of the documents should be made and kept with the filing (up to 3 copies, one for USPTO, atty copy, client copy). Without doing so, anyone referencing or challenging the filing at a later date will also need a rather expensive subscription to the database at the time they're reviewing the filing. According the the US Constitution, the purpose of granting patents and copyrights is "To promote the Progress of Science and useful Arts...". To me, charging copyright fees for those filings or requiring a current subscription to a database of documents imposes an untenable and unconscionable requirement for someone accessing patent filings.

Additional copies created for the purpose of performing the research (e.g. by the client, in-house atty/intern/clerk, etc.) should be covered under fair use, after all, the attys do have a subscription to access the information for research purposes, so making a paper copy on which they can write notes would be fair use. Perhaps a ruling that any such additional copies (beyond the 3 I mentioned above) must be destroyed after use/filing of the patent. That's the "best" result I can see for the plaintiffs in this case.

Re:IP daily? Not so much ...

[Anonymous Coward]

Not that I expect anyone to RTFA, but:

Earlier this year, the US Patent Office issued a memo indicating its belief that copying and submitting copyrighted documents should be considered a non-actionable fair use. Firms already pay for access to the articles and the USPTO also has its own access to most of the articles. The issue is whether the patent applicants must pay an additional fee for making a copy for the USPTO and an additional copy for the in-house file.

So it's less of patent lawyer not doing due diligence and more of copyright holders wanting to double dip.

Re:I fail to see the problem

[Anonymous Coward]

"Prior art" in this context usually means "Here's someone talking about a similar idea, but it's different to this application because..."

Re:What About ...

[blind monkey 3]

There were several times that this was done by the ninth "circus" court - a few:
MAI Systems Corp. v. Peak Computer, Inc
TRIAD SYSTEMS CORPORATION v. SOUTHEASTERN EXPRESS COMPANY
Blizzard V MDY