IP Owners Join USPTO: Copying For Patent Applications Is Fair Use

By Nancy Situ for Intellectual Property Watch

The United States Patent and Trademark Office (USPTO) and a leading US rights holder group have entered a case involving rights over prior art submitted in patent applications, arguing that it falls under fair use.

Earlier this year in March, publishing company John Wiley initiated copyright infringement proceedings against several law firms who had submitted copies of journal articles to the USPTO during the application process.

The submission of prior art is a legal requirement and patent attorneys who fail to submit these documents are subject to ethics breach charges and the associated patents held invalid.

In January, the USPTO issued a statement [pdf] indicating their belief that submission of these copyrighted materials to the USPTO for the purposes of complying with patent application rules cannot constitute copyright infringement due to the fair use doctrine.

On 11 June, the Intellectual Property Owners Association (IPO) concurred with the USPTO’s position, holding that “making copies of copyrighted non-patent literature in the course of preparing and prosecuting patent applications and maintaining comprehensive files relating to prosecution is fair use under 17 U.S.C. §107.”

The USPTO also later filed a motion on 12 June [pdf] to act as an intervener in one of the suits.

Nancy Situ is a researcher with Intellectual Property Watch. She is a JD Candidate at Osgoode Hall Law School in Toronto. Her interests lie within copyright and trademark policy, especially pertaining to freedom of expression and challenges in an online environment. She is currently an IPilogue editor and the Senior Editor-in-Chief of Obiter Dicta.