USPTO Says Copies Of Academic Articles Submitted As Prior Art Are Covered By Fair Use

from the wanna-fight? dept

With all the heat that publishers are starting to feel from the academic community, you might have thought that they'd avoid upsetting anyone else. But it seems that some publishers have decided to go after lawyers who make patent applications that include copies of academic articles as prior art. As the PatentlyO blog explains:
A number of scientific journals have begun to threaten law firms and their clients for submitting copies of journal articles to the USPTO. The typical cease & desist letter that I've seen says something like the following:
"We've been trolling through USPTO records and found that you submitted a copy of one of our articles articles to the USPTO and we suspect that you maintained other copies in your files and distributed additional copies within your organization. These actions constitute copyright infringement and are not fair use. We will sue you unless you come into compliance with our CCC licensing scheme."
In a way, that's strange: you would think that academic publishers would want to encourage this kind of use, since it establishes their titles as a kind of "gold standard" for prior art. Obviously the prospect of making some easy money proved irresistible.

Surprisingly, perhaps, the USPTO has waded in to this squabble and offered its opinion in a statement (pdf):
Patent applicants or their attorneys sometimes make copies of copyrighted NPL [non-patent literature] and submit those copies to the USPTO, pursuant to the USPTO's disclosure requirements. The USPTO considers this copying to be protected by the doctrine of fair use.
In the rest of its eight-page document, the USPTO goes on to explain the legal reasoning that led it to come to that conclusion.

It's rather remarkable to see the main US body responsible for promoting one kind of intellectual monopoly -- patents -- asserting that another -- copyright -- doesn't apply. And it will be interesting to see whether publishers want to raise the stakes by taking on the USPTO as well as lawyers, inventors and angry academics.

However, since the USPTO says that it takes "no position on whether additional copies of NPL made during the course of patent prosecution (e.g. for the client, for other attorneys, for the inventors, or for the law firm's future reference) qualify as fair use", publishers would probably do better to concentrate on pursuing licensing fees for that instead.

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Reader Comments (rss)

(Flattened / Threaded)

  1.  
    identicon
    Michael, Feb 7th, 2012 @ 4:27pm

    Am I the only one QUITE surprised that as a taxpayer funded agency the documents, including patent applications, are not publicly accessible for a nominal access fee? (Media + labor + shipping if physical copy; free if electronic since charging would be a net loss.)

     

    reply to this | link to this | view in thread ]

  2.  
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    Anonymous Coward, Feb 7th, 2012 @ 4:28pm

    Copyright trolling lawyers vs. patent trolling lawyers, who wins?

     

    reply to this | link to this | view in thread ]

  3.  
    identicon
    Loki, Feb 7th, 2012 @ 4:29pm

    It's rather remarkable to see the main US body responsible for promoting one kind of intellectual monopoly -- patents -- asserting that another -- copyright -- doesn't apply.

    I found it more remarkable that one group of IP maximalist would attack another group (and patent lawyers at that). You know the water is bloody when sharks start attacking other sharks.

     

    reply to this | link to this | view in thread ]

  4.  
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    Cynyr (profile), Feb 7th, 2012 @ 4:46pm

    copies of the application seem to not be covered.

    Hmm the interesting thing here is that the USPTO only is covering the copies submitted. If you have a PDF copy of it on your mail server, that needs to be evaluated separately doubly so if it is in the backup of your mail server as well.

    The assumption the scientific journals are making is that since everyone uses pdf these days, that there is likely at least 1 copy hanging around on a computer somewhere, or filed away in a folder containing a copy of the whole application for record keeping reasons. Since that specific copy wasn't submitted to the USPTO it needs a license as if it were any other "normal" copy...

    I'll go get my popcorn.

     

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  5.  
    identicon
    Anonymous Coward, Feb 7th, 2012 @ 5:27pm

    "However, since the USPTO says that it takes "no position on whether additional copies of NPL made during the course of patent prosecution (e.g. for the client, for other attorneys, for the inventors, or for the law firm's future reference) qualify as fair use", publishers would probably do better to concentrate on pursuing licensing fees for that instead."

    Isn't that exactly what they are doing?

    "we suspect that you maintained other copies in your files and distributed additional copies within your organization. These actions constitute copyright infringement and are not fair use"

    And of course, it's still insanity.

     

    reply to this | link to this | view in thread ]

  6.  
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    Hephaestus (profile), Feb 7th, 2012 @ 5:30pm

    Re:

     

    reply to this | link to this | view in thread ]

  7.  
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    A Guy (profile), Feb 7th, 2012 @ 6:10pm

    Re:

    That's a good question...

    How about a thunderdome style match to the death to figure it out?

    Throw them all in, only one comes out. The winner gets all the business that person can handle for the rest of his life due to a monopoly on legal trolling, and the rest of society gets rid of all those trolling lawyers. It's a win-win.

     

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  8.  
    identicon
    Bengie, Feb 7th, 2012 @ 6:25pm

    Re:

    The old "The Unstoppable Force" vs "Immovable Object" debate

     

    reply to this | link to this | view in thread ]

  9.  
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    Adam Wasserman (profile), Feb 7th, 2012 @ 6:38pm

    Is there a lawyer in the house?

    Can somebody tell me why USPTO refers to the "doctrine" of fair use?

    I had always thought that doctrines were legal practice as established by precedent.

    Fair use is a section of the copyright law. It is a legal right. This part at least I am sure of.

    So is it normal to refer to legally guaranteed rights as "doctrine"?

     

    reply to this | link to this | view in thread ]

  10.  
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    A Guy (profile), Feb 7th, 2012 @ 7:07pm

    Re: Is there a lawyer in the house?

    Fair use didn't come about in the US through a legislative process. It was largely decided by the courts when applying the first amendment to copyright cases.

    The legislature took the common law precedents and codified it into 17 U.S.C. 107 in 1976.

    Contrary to what some commenters here would like you to believe, fair use came from judges balancing the first amendment and copyright, it did not come out of nowhere in 1976.

     

    reply to this | link to this | view in thread ]

  11.  
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    Anonymous Coward, Feb 8th, 2012 @ 1:31am

    And in other news a Judge denied Capitol request to shutdown used online MP3 Store.

    http://arstechnica.com/tech-policy/news/2012/02/judge-denies-record-labels-request-to-shut ter-used-mp3-store.ars

    That is priceless. Capitol needs to go to trial now and show why the used seller which is a cloud storage service and can control who owns what can't allow their members to sell what they bought.

     

    reply to this | link to this | view in thread ]

  12.  
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    Anonymous Coward, Feb 8th, 2012 @ 6:52am

    Re:

    Just to clarify, the USPTO is self-funded by fees charged to those who use its services.

     

    reply to this | link to this | view in thread ]

  13.  
    identicon
    Anonymous Coward, Feb 8th, 2012 @ 8:11am

    I concur it is surprising that the USPTO has promulgated a legal opinion as to the fair use defense simply because infringement of copyright by or for the USG is covered by 28 USC 1498, which provides in pertinent part:

    (b) Hereafter, whenever the copyright in any work protected under the copyright laws of the United States shall be infringed by the United States, by a corporation owned or controlled by the United States, or by a contractor, subcontractor, or any person, firm, or corporation acting for the Government and with the authorization or consent of the Government, the exclusive action which may be brought for such infringement shall be an action by the copyright owner against the United States in the Court of Federal Claims for the recovery of his reasonable and entire compensation as damages for such infringement, including the minimum statutory damages as set forth in section 504 (c) of title 17, United States Code: Provided, That a Government employee shall have a right of action against the Government under this subsection except where he was in a position to order, influence, or induce use of the copyrighted work by the Government: Provided, however, That this subsection shall not confer a right of action on any copyright owner or any assignee of such owner with respect to any copyrighted work prepared by a person while in the employment or service of the United States, where the copyrighted work was prepared as a part of the official functions of the employee, or in the preparation of which Government time, material, or facilities were used: And provided further, That before such action against the United States has been instituted the appropriate corporation owned or controlled by the United States or the head of the appropriate department or agency of the Government, as the case may be, is authorized to enter into an agreement with the copyright owner in full settlement and compromise for the damages accruing to him by reason of such infringement and to settle the claim administratively out of available appropriations.

    If such a lawsuit was ever brought, the USG would be entitled to assert any and all defenses provided for by Title 17, one of which defenses is fair use.

    What the USPTO has essentially done with its memo is to articulate the equivalent of a brief stating the position it would take if a holder of a copyright was inclined to bring suit against the USG under Section 1498. To the extent the factual sitation posited by the memo could encompass private actors, they would be immunized from suit.

    In other words, the USG would be on the hook, private actors may be immunized from a private suit before a federal district court, and in any suit against the USG it would be free to raise fair use as a defense.

    As an aside, if a suit was filed under the DMCA for an act such as violation of its anti-circumvention provisions, the USG would be immune from suit under principles associated with sovereign immunity. 28 USC 1498 has been interpreted as comprising a limited waiver of sovereign immunity, and the DMCA has been interpreted (Blueport Co. v. US, CAFC 2010) as not manifesting any such waiver.

    BTW, I can well understand why 28 USC 1498 nowhere appears in the memo. After all, why give away to a rights holder a legal means by which to press such a suit in the first place?

     

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  14.  
    identicon
    Anonymous Coward, Feb 8th, 2012 @ 9:48am

    Re:

    If copy protection laws lasted a reasonable period of time then people can better reference prior art. Otherwise, prior art may get patented without anyone knowing.

     

    reply to this | link to this | view in thread ]


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