Patent Attorneys Sued For Copyright Infringement

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Patent Attorneys Sued For Copyright Infringement

Posted by Soulskill on Sunday March 4, 2012 @01:15AM from the sibling-fights-are-the-worst-fights dept.

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."

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Looks like its by Intrepid+imaginaut · 2012-03-04 01:27 · Score: 5, Insightful

intellectual property all the way down...
1. Re:Looks like its by Anonymous Coward · 2012-03-04 03:29 · Score: 5, Funny
  
  Exactly. And think about the royalties if they have to get a copyright license in order to sue in court for unpaid royalties for documents used in the court case!
  They've invented a perpetual motion IP machine. That's got to be worth a patent.
What About ... by WrongSizeGlass · 2012-03-04 01:29 · Score: 4, Insightful

What about any legal proceeding? I'm sure that there are countless instances of published works used in legal proceedings that aren't copyright related. Do the lawyers need to pay royalties for those as well? What a racket!
1. Re:What About ... by Black+Parrot · 2012-03-04 01:41 · Score: 5, Insightful
  
  What about any legal proceeding? I'm sure that there are countless instances of published works used in legal proceedings that aren't copyright related. Do the lawyers need to pay royalties for those as well? What a racket!
  I would be astonished if this isn't considered Fair Use.
  
  --
  Sheesh, evil *and* a jerk. -- Jade
2. Re:What About ... by blind+monkey+3 · 2012-03-04 07:42 · Score: 4, Informative
  
  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
  
  --
  BM3
3. Re:What About ... by JoelKatz · 2012-03-04 11:26 · Score: 4, Interesting
  
  Actually, it's not just fair use, the content is not copyrightable in this context, under the merger doctrine.
  Copyright only applies to protect one way out of millions of equally-good ways. Shakespeare wrote Romeo and Juliet, but there are millions of other ways to write a story about star-crossed lovers. He is entitled to copyright (well, was entitled) in cases where any of those other ways would work just as well. His copyright doesn't prevent anyone else from performing any function, they just have to express their ideas a different way.
  However, in this case, nothing but the actual article will work. Nothing else will make it possible for the copyright office to reliably determine how and whether the prior art relates to the invention that is the subject of the application. A copyright gives you no power to prevent others from accomplishing any useful function. If your work is the only way to perform that function, copyright yields. (You need a patent to own a function rather than a particular expression.)
  When only one work will serve a functional purpose, merger doctrine applies and copyright protection is unavailable.
IP daily? Not so much ... by Anonymous Coward · 2012-03-04 01:33 · Score: 5, Insightful

This is not a catch-22, it's a cost of doing business. The lawyer needs to purchase the information for the application and failed to do so.
Of course it is interesting to see an Intellectual Property (IP) Lawyer fail to guard IP.
1. Re:IP daily? Not so much ... by Oswald · 2012-03-04 01:53 · Score: 3, Insightful
  
  I vote we can mod parent up and get on to the next thing. People who make their living in IP can hardly expect to just ignore it when the shoe is on the other foot. And couldn't they just bill the extra expense back to their clients anyway?
2. Re:IP daily? Not so much ... by Anonymous Coward · 2012-03-04 01:55 · Score: 5, Informative
  
  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.
3. Re:IP daily? Not so much ... by dna_(c)(tm)(r) · 2012-03-04 01:55 · Score: 3, Funny
  
  [...]The lawyer needs to purchase the information for the application and failed to do so.[...]
  Then change the law so that even an IP-lawyer can understand it. This is just excessive greed.
4. Re:IP daily? Not so much ... by Pinky's+Brain · 2012-03-04 01:59 · Score: 3, Insightful
  
  The information isn't necessarily available for purchase, if it's on paper right of first sale allows you to pass it on ... but if it's an electronic document it could very well come with a license which doesn't allow you to transfer ownership ... at which point you're kinda stuck. RAND is the exception, not the rule ... the rule is "whatever the market will bear, unless not granting a license at all has competitive advantage"
  Of course the same is true for patents, so it's hard to feel any sympathy.
5. Re:IP daily? Not so much ... by DoofusOfDeath · 2012-03-04 03:12 · Score: 4, Insightful
  
  I disagree. The ranks of the wealthy are filled with those how managed to get the rules applied mostly to their competitors and not to themselves.
  (To be fair, I think we're all tempted to act like that. But some of the super-rich have been extraordinarily good and/or lucky in achieving biased enforcement of rules meant for everyone.)
6. Re:IP daily? Not so much ... by metacell · 2012-03-05 01:43 · Score: 3, Interesting
  
  This is not a catch-22, it's a cost of doing business. The lawyer needs to purchase the information for the application and failed to do so.
  Ah, but what if the other party buys the copyright to the publication the prior art is published in, and refuses to license it at any cost?
Summary is misrepresenting things... by msauve · 2012-03-04 01:50 · Score: 5, Informative

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."

--
"National Security is the chief cause of national insecurity." - Celine's First Law
1. Re:Summary is misrepresenting things... by gstrickler · 2012-03-04 04:11 · Score: 5, Informative
  
  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.
  
  --
  make imaginary.friends COUNT=100 VISIBLE=false
2. Re:Summary is misrepresenting things... by Albanach · 2012-03-04 05:38 · Score: 4, Insightful
  
  Should you ever have a need to hire an attorney, you may well appreciate that they are pedantic. Sure, that can often be annoying, but without it,we'd introduce a lot of vagueness into our legal system.
  In this case it's documents being copied. But lets say the law firm is litigating over a music CD. They send a paralegal down to the nearest store to pick up a copy, then duplicate that copy for every attorney on the case. Would that be okay?
  How about if it's a computer program. Can they just duplicate it for every attorney because it's part of a case? A movie?
3. Re:Summary is misrepresenting things... by Overzeetop · 2012-03-04 06:02 · Score: 4, Interesting
  
  Surprisingly, this is very relevant and a major issue for groups which use material created by others. It's much more relevant today with making physical copies (and digital ones) so easily. It strikes directly to the heart of whether copyright is a very literal thing or whether it's a concept.
  For example: musical groups - especially amateur ones - to comply with copyright law effectively need to purchase a copy of an arrangement for each member of the group. My group buys a few extra, for guests and new members. We might only have 40 members, but we typically purchase 50 copies. Often we buy a master and a license that lets us make the reproductions (for low volume charts, a production run is not feasible). Sometimes we make minor changes - interpretations involving tempo, pauses, minor musical changes. To keep current we have to manually annotate 50 copies. We can't for example, make a modification and hand it out, or make a second set with markings for stage direction for everyone to have. The question is whether it matters that we can make these teaching tools. There are only 40 of us and we bought a copy for every single person - does it really matter if I give each man an extra copy with our special data overlayed? How about if I deliver it by PDF? Do I have to pay a fee every time a man downloads the pdf - say if he's not savvy and just looks at the music on his computer, re-downloading it into the browser's reader form the website's "members only" area every time he wants to practice. That doesn't appear to be the intent...but it appears to be the law.
  This matters for a law firm. If they purchase the right to a copy of the work, then annontate it and send to to everyone - either on paper or digitally - have they made more "copies" for the purpose of copyright. Let's say they pay for a copy for every lawyer and consultant on the case. If a consultant marks up the one he receives, then makes a copy and mails it back to the original lawyer, is that an infringing copy? If the original lawyer bought a copy for everyone, and the consultant makes a copy and sends it back - has a copy been made? (Yes) Is there any value in the copy? Maybe...the recipient already owns one, and has paid for it so is getting another copy (presumably for use in the original context) really infringing?
  
  --
  Is it just my observation, or are there way too many stupid people in the world?
Yo dawg by Anonymous Coward · 2012-03-04 01:52 · Score: 5, Funny

We heard you like suing people so we put a copyright in your patent process so you can be sued while you're suing.
Re:I fail to see the problem by Anonymous Coward · 2012-03-04 02:05 · Score: 4, Informative

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