Copying non-patent documents during patent prosecution–COPYRIGHT INFRINGEMENT?

There is an interesting copyright litigation case going on right now. John Wiley and Sons (“Wiley”), publishers, are suing patent attorneys for copyright infringement. Some background, when a patent attorney (or inventor) files a patent application, the patent attorneys and their clients are required by law to submit all material relevant to the patentability of the patent application that was filed. Often these documents include patents and published patent applications, which by themselves have no copyright protection, especially when copied in ordered to submit to the patent office. However, on occasion, scientific papers are relevant to the patentability of a patent application, and the attorneys (or inventors) need to submit copies of those papers to the patent office. This is the basis of the copyright litigation lawsuit started by Wiley. Wiley is claiming that the defendant law firm has made copies of scientific papers that Wiley owns the copyright on, and Wiley is suing for copyright infringement. Now, last week, the patent office filed a motion to intervene in that lawsuit, even though the patent office is not a party to the lawsuit. The motion does not present a substantive case as to whether the copying of those scientific papers should be considered copyright infringement, or not, they are just seeking the court’s permission to be able to be involved in the lawsuit. Presumably the patent office will argue that the copying of scientific papers should be considered “fair use”, and NOT lead to damages against patent attorneys and inventors, when copied in order to submit to the patent office. However, we shall see. The safest course of action is: when submitting scientific papers to the patent office with an Information Disclosure Statement (“IDS”), one should pay for a lawful copy of the paper(s). Stay tuned!

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