The USPTO recently file a Motion to Intervene in a case filed by John Wiley & Sons (a global publishing company) against the law firm McDonnell Boehnen Hulbert & Berghoff (“MBHB”).  In the case, John Wiley alleges that MBHB infringed its copyrights by copying and distributing its works.  MBHB, allegedly, copied these works in the course of preparing and submitting various patent applications to the USPTO, within the firm, and to clients.  According to the Motion, “[t]he USPTO has a paramount interest in ensuring that patent applicants can and do disclose the document necessary to determine whether a proposed patent should be granted. . . .  If the plaintiffs obtain the relief they seek, [sic] would likely have a significant negative impact on the USPTO’s ability to effectively and efficiently carry out its mission and its obligations as imposed by Congress.”

This is the second case of this type filed by John Wiley this year, who sued the patent law firm Schwegman, Lundberg, & Woessner in the US District of Minnesota.

The USPTO’s disclosure requirements often require an applicant to provide the USPTO with copies of materials that are the subject of copyrights held by third parties.  Specifically, 37 C.F.R. § 1.56(a) provides that “[e]ach individual associated with the filing and prosecution of a patent application has a duty to . . . disclose to the [USPTO] all information known to that individual to be material to patentability. . . .”  This disclosure occurs in the form of an information disclosure statement, which is required to include a legible copy of “. . . each publication or that portion which caused it to be listed. . . .” 37 C.F.R § 1.98(a)(2)(ii).  The problem with this requirement, however, is that a copyright owner has an exclusive right to make and distribute copies of a work.

These lawsuits come on the heels of a public memorandum on the topic issued by the General Counsel for the USPTO on January 19, 2012.  In the memo, the USPTO indicated that it has either obtained licenses in all cited NPL or that providing copies of unlicensed NPL to an applicant or the public is Fair Use under 17 U.S.C. §107.   The USPTO also states that they “believe it is fair use for an applicant to make copies of NPL and submit those copies to the USPTO during examination in an IDS.”  The USPTO, however, makes no comment as to whether any additional copies made in the course of patent prosecution, i.e. those not intended for submission to the USPTO, qualify as fair use.

Curiously, compliance with a federal law or regulation is not currently specifically included in the definition of Fair Use.  Perhaps after these lawsuits are settled, Congress will change the law and it will be.

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