Patently Fair or Patent Nonsense? Prior Art Submissions, Copyright and Fair Use

Last week I had the privilege of addressing the Dallas Bar IP Section on the subject of the current controversy over copyright and prior art submissions in patent prosecution. Four lawsuits have been filed by publisher John Wiley & Sons and the American Institute of Physics against law firms alleging copyright infringement for reproducing and distributing various scientific articles in the course of preparing and submitting patent applications. The lawsuits allege that the law firms violated copyright in the articles at issue by (1) making and distributing copies of the articles to the USPTO in connection with patent applications; (2) making additional copies of articles cited in patent applications; and (3) making copies of articles that they neither cited nor submitted to the USPTO for internal purposes. One of the cases apparently settled over the summer. In two of the remaining cases, the plaintiffs have amended their pleadings to drop the allegations concerning submissions to the USPTO, leaving only the allegations regarding internal law firm copying.

The copyright and patent communities have taken note of these lawsuits, and there is an ongoing discussion regarding whether the practices at issue constitute fair use of the articles in question. In January of 2012, the General Counsel of the USPTO issued a memorandum asserting that the accused practices constitute fair use, and the USPTO has intervened in two of the cases as a defendant and counterclaimant, seeking a declaration of noninfringement. In this post, I will give an overview of the fair use doctrine and apply it to the copying at issue in the prior art cases. Continue reading

Buy, Buy, License?
Naomi Jane Gray to join panel at ABA CLE event

I will be a panelist at the upcoming First Annual Intellectual Property Litigation Committee Regional CLE Workshop on June 10, 2011 in Washington, D.C. The full-day program is sponsored by the ABA Section of Litigation Intellectual Property Litigation Committee and will feature panels on copyright, trademark, trade secret and patent topics. The Honorable Randall L. Rader, Chief Judge of the U.S. Court of Appeals for the Federal Circuit, will deliver a lunchtime address. This is going to be a dynamite program and will be capped by a networking reception at the end of the day.

My panel is entitled “Buy, Buy, License? The First Sale Doctrine and What Happens When You Thought You Bought But You Didn’t.” Along with my fellow panelist, Cecil Key of Dickinson Wright, and our moderator, Michael Steger of the Law Offices of Michael Steger, we will address the recent UMG v. Augusto and Vernor v. Autodesk cases and their impact on the first sale doctrine.

Please join us! To register, click here.