The New Choice: Inequitable Conduct or Copyright Infringement

CopyrightSymbolMany patent applicants enjoy the fact that the USPTO lists all cited and considered references on the face of each patent. That listing provides an apparent presumption that the newly patented invention is a step beyond anything found in those references. Economists have even shown that patents with more cited references tend to be relatively more valuable. Patent applicants are also under a duty to submit prior art references that are material to patentability. 37 C.F.R. §1.56.

A negative side of citation is now emerging. Recently, copyright owners have begun trolling non-patent prior art citations to see whether any of their works were copied and submitted to the USPTO. Of course, following standard law firm practice additional copies were likely generated for the file and for review by the inventors or attorneys. These copies may be hard copes or electronic versions, but as MegaUploads can now attest, that makes no difference in copyright law. Statutory damages for copyright infringement range from $750 to $150,000 per work. The exact figure is largely within the discretion of the judge and is based upon what the "the court considers just" and whether the infringement was willful.

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."

To be clear, the focus in the letter is on copies being submitted to the USPTO as well as copies retained in the file and distributed internally.

I looked-into the CCC automated licensing system and found that they offered the right to make copies of a NATURE article (one of the journals taking action) for $32 per copy. 

USPTO Response: In a surprisingly bold statement, the USPTO's General Counsel Bernie Knight released a statement late last week indicating the USPTO's belief that submission of unlicensed copies of copyrighted materials to the USPTO for the purpose of complying with Rule 56 cannot create copyright liability because that action is fair use under 17 U.S.C. 107.  This issue previously arose when the USPTO was building the PAIR electronic record system.  It was because of potential copyright concerns that the USPTO decided not to make available non-patent prior art through the PAIR system. However, the USPTO has offered its position that it is fair use for the agency to charge a fee to make and distribute paper copies of the copyrighted works (as part of the file history).

The USPTO took no position on whether applicant's creation of file-copies and internal distribution of copies also qualify for the fair use defense. In addition, applicants who have obtained limited licenses to works may be under a contractual duty to avoid making further copies even if those copies would have been fair use.

How much money?: On an annual basis, I would estimate that at least five hundred thousand journal articles are submitted to the USPTO for consideration.  Each submission probably results two local copies for the file & review by the attorney, inventors, and others in addition to the submitted copy.  That takes the annual licensing market to around $50 million.  Not a tremendous amount for a nationalmarket, but that may be enough to save the struggling scientific journal industry.

Fair Use: An interesting aspect of fair use analysis is that the outcome can change based upon market conditions and general custom.  Here, for instance, if it is very easy to obtain a license by simply paying a fee online and a number of patent applicants begin paying that fee regularly, an action that was once considered fair use may again fall under the copyright infringement umbrella. 

How will your firm respond? Should your engagement letter be amended? 

109 thoughts on “The New Choice: Inequitable Conduct or Copyright Infringement

  1. I’m quite certain…” begs the questions: So why hasn’t this been done before? Been done in the first instance, or at the first opportunity?

    The panacea of virtually zero cost and all on-line quite ignores the fact that the initial generation of material is not free.

    A mindset of “entitlement” is evident.

  2. What? Journals are the billboards of well funded research groups. The game is to generate a long enough list of published articles for one’s resume, grant application, or tenure review committee.

    I’m quite certain professional organizations could create peer-review cooperatives that function just as well if not better than the current system, and for virtually zero cost. All on-line.

  3. The PA plays precisely the same role in “teaching” as does a research paper that a teacher has photocopied and distributed. On this grounds I would disagree with LB.

    I would respectively submit that you are not looking at the right grounds.

    It is not that your analogy, in itself, is incorrect; rather, it is that the analogy itself is not appropriate.

    Prior Art, by definition, is not what earns the patentee his patent. Teaching about “what was before” is not what a patentee does, nor is it (directly) related to the right earned by a patent application becoming a patent.

    Prior Art is what is overcome, surpassed, added to, with the application.

    Let’s not confuse what an applicant does with the duty to disclose what an applicant is aware of. Let’s not confuse the role of the applicant with the role of the examiner.

    which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.

    Disclosure is akin to reporting – not teaching. IF an applicant is “teaching” with the Prior Art, he is doing more than what is required of him. Examiners are charged to know the prior art and thus are not to be in a positon to need to be taught. That is why they make the decision whether or not to use a particular reference.

    This is a subtle, but no less important distinction, to be maintained. It is also one of the underpinning reasons why Dr. Tafas prevailed in his suit against the Office. We should not validate this notion of “teaching” if for no other reason than it supports the attempted abdication of the Office to do its job (and note, that I am not saying that this is an easy job, but in order for the job to be done well, responsibility for that job must be owned by those who are to do that job).

  4. Whichever firm thinks they can get a summary judgment dismissal in 30 seconds and sanctions under Rule 11 for a frivolous complaint.

  5. Very helpful, IT. Thank you.

    Factor (1)is given in the alternative: commercial use viz a viz nonprofit educational. In this respect one would want to ask: How many times has the CAFC referred to what prior art “teaches”???

    The PA plays precisely the same role in “teaching” as does a research paper that a teacher has photocopied and distributed. On this grounds I would disagree with LB.

  6. Would love to see this Posner opinion or whatever you are referring to.

    I’m no expert on c’right, but I have never heard of fair use being predicated on the lack of commercial impact. Is that an approach the courts have taken?

    Can’t imagine anyone having the chutzpah to go after a federal judge for using c’righted material in an opinion. If I grew them that large I wouldn’t be able to get my pants on.

  7. CF:

    Expressly aside from any “fair use” discussion

    and

    I think the answer to your question here is that the PTO has clear fair use rights

    W

    T

    F

  8. So which one of the bigtime hxrdxss patent law firms is going to stand up and tell these copyright trxlls to sxck it in front of a judge?

  9. I think that looks about right, IANYL TINLA.

    I believe the NPL IDS material becomes publicly accessible at publication of the application, not at issuance, however – I don’t think this portion of the argument favors fair use very much.

    Also, I wouldn’t characterize the purpose of the attorney’s copying as “teaching.” Rather, the purpose seems to me to be “evidentiary” – it’s not the teachings themselves that are of interest, but the evidentiary value of the copies in establishing the state of the prior art, in the context of an official government inquiry.

    Thanks for sharing!

  10. Believe it or not, my previous employer balked at copying a reference for submission in an IDS (even with the author/inventor’s permission), and required that I provide a legal memorandum establishing that submitting an entire work in this manner is fair use. It turns out that there is some case law on the issue of fair use when attorneys copy and publish works in the course of representing clients. Emphasizing that I Am Not Your Lawyer (IAMNYL), and This Is Not Legal Advice (TINLA), see below:

    35 U.S.C. § 1.56 establishes that “each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability.” Meeting this duty requires that, for each publication listed by Applicants in an Information Disclosure Statement (IDS) patent applicants submit “a legible copy of … each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office.” As a result, Applicants routinely copy and submit articles, webpages, and other copyrighted materials without permission or authorization of copyright owners, and do so with an expectation that such copying constitutes Fair Use, and thus avoids infringement of the copyrights. Are these expectations justified?
    17 U.S.C. § 107 establishes Fair Use as a limitation on the exclusive rights granted by copyright as follows:
    Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
    (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
    (2) the nature of the copyrighted work;
    (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
    (4) the effect of the use upon the potential market for or value of the copyrighted work.
    The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.
    Most Applicants regard the purpose of the submissions to be in the category of “teaching,” as the Applicant is satisfying a requirement to teach the Examiner about the prior art or other information relevant to the patent application.
    The first factor, the purpose and nature of the use, appears to weigh heavily in favor of a finding of Fair Use, especially for Intellectual Property Law Firms copying materials as necessary to represent their clients (see Healthcare Advocates v. Harding, Early (ED Pa 7/20/07); finding that copying, display, and distribution to co-counsel of entire published and archived web pages was Fair Use because the firm’s primary purpose in copying and viewing the web pages was to defend its clients). Moreover, the Applicant does not stand to profit from sale or distribution of the copyrighted work. Rather, the submission to the USPTO is not made available to the public until after the patent issues, which may never occur, and often will not occur for several years. After issuance of the patent, under current law, it is possible for members of the public to order copies of the document from the USPTO for a fee (e.g., $25), but it is the USPTO that receives this remuneration, and not the Applicant.
    The second factor, the nature of the copyrighted work, should typically weigh in favor of a finding of Fair Use. In particular, the types of works submitted in an IDS are typically published works, so the author’s right to control the first public appearance of his expression is preserved. Moreover, such works are uniformly factual, rather than fictional, works, being largely informational in nature.
    The third factor, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, at first appears to weigh against a finding of Fair Use, as Applicants typically submit publications in their entirety. However, the Supreme Court has found that, if the purpose of the Fair Use requires larger amounts of copying (e.g., as in the case of “parody”) then such copying can still be Fair Use (see Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994)). Thus, if it is necessary to submit the entire work to the USPTO in order to fulfill the “teaching” purpose of the copying, then copying of the entire work in those circumstances should not prevent a finding of Fair Use.
    The fourth factor, the effect of the use upon the potential market for or value of the copyrighted work, should typically weigh in favor of a finding of Fair Use. For example, submitting a single copy of a work to the USPTO in a patent application does not directly publish the work. In other words, although the USPTO may later make copies of the work available to the public for a fee (e.g. $25), the Applicant is not the entity publishing the work. Rather, the USPTO is making and selling new copies of the work.
    In conclusion, so long as Applicants only copy and submit in IDSs those portions of works that are necessary to teach the Examiner about prior art or other factual information relevant to a patent application filed at the USPTO, the defense of Fair Use to copyright infringement should normally be available even where works are copied in their entirety.

  11. but is in every real sense ‘distribution.‘ ”

    Fixed.

  12. other, thanks.

    So the company/lawfirm would have the right to send an internal copy to the PTO, but the PTO would not have the right to itself copy it under the license?

    I think the answer to your question here is that the PTO has clear fair use rights, and if a company/lawfirm were sued for PTO copying in violation of the CCC agreement, I am sure the goverment would intervene and say so.

    But, back to the CCC license, I think the restriction on electronic distribution makes some sense, but there has to be some common sense here as well, as the standard form of communication in companies is by e-mail. That automatically creates electronic copies, but is not in any real sense “distribution.”

  13. I guess stealing it and giving it to the Church and the University while you keep me all locked up in a Box is not a Sin? And keeping me in the Box was the reason ALL OF YOU you did what you did!
    No wonder the Catholic Church loves you. No wonder the Knights sucks up to you your Highness! No wonder the Police have screwed me ( mostly Catholic )! No wonder I was allowed into the Bells of St. Marys.. And no wonder Guerwood hates me even more than the rest. I’m Catholic by Birth And RED.. Blood red!

  14. Do you mean in the sense of “gist of the work”? Because if so, then your follow-on statement of taking from a plurality makes no sense.

    I cannot tell what you are trying to say.

  15. Curious–

    I was referring to the “artistic” quality, or the quality (character, form, or nature) of the expression.

    I was attempting to compare the quality of the expression of a small excerpt, with that of the entirety of the work.

  16. Yes, I do know.

    When all else fails, make a currently-unsupported policy argument.

    LOLZ. Translation: Pound your paper table, preferably your paper table will have stick figures drawn on it, and preferably those stick figures will be drawn in crayon.

  17. no difference in the quality of a small excerpt

    Something that I have oft struggled with: What does “quality” of the excerpt have to do with anything? If you are admitting to having a copy, why should it matter at all what quality the copy has?

  18. Expressly aside from any “fair use” discussion, the CCC license expressly allows a “HARD COPY” but distinguishes and controls electronic copies.

    The submission of the IDS could not be undertaken with an electronic copy of the reference based on the stringent language of the license. The USPTO would not be within their rights to make an electronic copy of the provided HARD COPY.

    The lure of electronics (quick and nearly perfectly exact copies) just does not excuse the acts of copyright infringement.

    That’s why electronic copying simply is not the same as “HARD COPIES” – electronic copies in use such as the internet only works by creating a copy for each view. Ease (or cost) are not important points to the presence of the copyright.

  19. So, the question becomes this:

    Why would an IP attorney ever assume the terms of copyright control (especially on technical items that typically cost and arm and a leg and are tightly controlled)?

  20. image aggregator trolls

    What’s up with the ha_te towards those who deal in property?

    This type of property is made to be alienable. So why the disgust when it is alienated? Do you ha_te your landlord too?

    “Rent” is not a dirty word. Business is not ev_il just because it is business.

  21. Didn’t Google-Books have some such time-limit special awhile back?

    Or was that just a case of Bog Bother taking something back after bunches of people bought the articles (and some even lost their own annotations)?

  22. That is how image aggregator trolls like Getty Images work. They seem to depend on time limits to catch web site owners that don’t understand that images used by their web designers are licensed only for a limited time.

  23. I went looking through my emails today, and as usual it was a long process, and timing being is everrrrrything LOL. I bet you wish you could reach in and take it back. And now that I have copied it you can’t come in and remove it, well you could but….. I am emailing it to a select bunch. they will be sure to see just how “EVIL” you really are.

  24. Derek, I was thinking along the same lines as you. Where would the average patent attorney get a copy? From the client/inventor who might have the article for ordinary business purposes. Major businesses normally have a CCC license.

    So, the question becomes this: Does the CCC license includes the right to give a copy to outside counsel for the very purpose of including it in an IDS. I would say yes because the license includes the right to copy for

    “Internal Purposes shall mean the ordinary business purposes of User; provided, however, that Internal Purposes shall not include: (i) fee-for-service copying, (ii) the sale of copies, (iii) the systematic reproduction and distribution of copies to Other Persons, including inter-library loans, or (iv) the bulk reproduction and distribution of copies to Other Persons.”

    link to loc.gov

  25. The settling was immediate not the reaching of a settled position. Learn to read ya tard.

    If you read sci journals as bad as you just read that article you deserve no articles, from copyright or without it.

  26. Both bottles “immediately settled into a knocked over positioning”? Immediately? Either something strange is going on in your office, or this report is wholly unreliable. Of course, this is why I prefer to get my science from journals, because they filter this sort of cr@p out.

  27. “If paywalls on scientific articles are killing kids by withholding drugs, I shudder to think of the genocide that’s been wrought by pharmaceutical patents!”

    As well you should.

    “research isn’t free.”

    True, but publishing is pretty much free. Look, I’m doing it right now.

    A Report on the Findings of This Afternoon.
    6 Lord, 6′s Office Mate
    01/24/2012

    Abstract: A bottle sitting upon a desk was upended and it was determined that gravity is still in effect.

    In this paper we attempt to verify that the “universal” force known as “gravity”1 is still affecting objects on the earth.

    Experiment: Two bottles of differing volume and size (22 oz. and 16 oz) and of different density (plastic “1″ and glass) were tipped from rest into a slightly agitated position.

    Results and Conclusion: Both bottles tipped over and immediately settled into a knocked over positioning. We conclude that the universal force known as “gravity” is still very much in effect, at least with regards to small local objects near the surface of the earth.

    1. Newton, I. “Philosophiæ Naturalis Principia Mathematica” 1687 avail. online at link to cudl.lib.cam.ac.uk

    Wow, that cost a sht ton!

    Journals have to charge to ensure a high quality of editorship, to maintain the quality of the work therein.

    No, that’s what they do currently that is not what they “must” or “have” to do.

  28. “The lure of electronics (quick and nearly perfectly exact copies) just does not excuse the acts of copyright infringement.”

    The lure of maintaining archaic iiip rights in the form of today’s copyright lawls doesn’t excuse today’s copyright lawls.

  29. MM point is still a strawman because he acts like his point he is addressing is important.

    It is not important.

    Repeating the unimportant point as if it will somehow gain importance when being repeated is just continuing the strawman.

    MM might as well be attacking a picture of a person.

    Anywhere “on the internet”, a copy is still made on your local viewing device. Reproduction cost is not a factor.

    That’s why the internet simply is not the same as a library – the internet only works by creating a copy for each view.

    The lure of electronics (quick and nearly perfectly exact copies) just does not excuse the acts of copyright infringement.

  30. MM point is a strawman because whether or not it is expensive to publish on the interent is a non-point.

    socktard, my point was directly responsive to BJA’s assertion that the “article would not exist” unless the journal charged for electronic copies. That’s pure b.s. For starters, it ignores the fact that there are scientific journals out there that have been providing free electronic copies of articles for years. It also ignores the fact that it costs virtually nothing to self-publish on the Internet.

    MTBHTDT

  31. MM point is a strawman because whether or not it is expensive to publish on the interent is a non-point.

    Anywhere “on the internet”, a copy is still made on your local viewing device.

    That’s why the internet simply is not the same as a library – the internet only works by creating a copy for each view.

    The lure of electronics (quick and nearly perfectly exact copies) just does not excuse the acts of copyright infringement.

  32. Interesting in view of SOPA & PIPA and all other efforts by various entities wanting to expand and protect copyrights. Copyrights are inordinately broad (IMHO) re: term and possible redress (criminal!). Some rationality has to be pushed back into the system…

  33. “The lure of electronics (quick and nearly perfectly exact copies) just does not excuse the acts of copyright infringement.”

    not it doesn’t, but I sure hope that if I was paying for an electronic subscription to view such documents, my PAID subscription would allow me to view the document without risk of copyright infringement.

  34. Even with a URL, a copy is still made on your local viewing device.

    That’s why the internet simply is not the same as a library – the internet only works by creating a copy for each view.

    The lure of electronics (quick and nearly perfectly exact copies) just does not excuse the acts of copyright infringement.

  35. “Either way” is hardly a “big if.” “Either way” is an “if.”

    Alrightee then. Sockie the Comment Referee Troll just took me to task for the size of my “if.”

    You’ll excuse me sockie while I pause to smell the toast resulting from your latest attempt to jump the shark while assuming a fetal position.

  36. Maybe we need to take a step back and ask the question, “Are ‘copies’ really needed any longer?” As more and more information is made available online, would not a URL, sufficient to allow the PHOSITA access to the referenced information, suffice? Sure, there likely would be a subscription and the associated cost involved, but a copy – physical or electronic – is not the only way to disseminate such information.
    Of course, you would want to be guaranteed that such a URL indicating the location of the information would not change, and 37 CFR 1.98 would need to be revamped to reflect this

  37. A couple of points:

    (1) IIRC, both WIPO and EPO make full file histories, including NPL, available online – though I believe they note the possible existence of copyrighted material in the file histories. I don’t know about other countries.

    (2) When I worked in-house, we had an institutional CCC license, which IIRC permitted general copying within the organization and *some* (but I don’t recall how much, but I think it was “necessary” or equivalent, e.g. to consultants) transmittal outside the organization for a flat annual fee.

  38. If paywalls on scientific articles are killing kids by withholding drugs, I shudder to think of the genocide that’s been wrought by pharmaceutical patents!

    I’m being glib, of course. The reasoning is similar for both IP protections– research isn’t free. Journals have to charge to ensure a high quality of editorship, to maintain the quality of the work therein.

    That said, articles of this sort are, by definition, an accounting of facts, so they DO get de minimis copyright protection. You can freely summarize and paraphrase and sidestep any infringement claim. Only when you actually copy an article or a substantial portion of an article– word for word– are you committing infringement. The protection is as “de minimis” as it gets.

  39. sustained cogency and self-control

    LOLZ – from the same guy that brings you commingled opinion and fact, dressed in the same garbs of law, the “The presumption of regularity of official acts“, and the wacky juvenile tirad against Anon (when the discussion did not go his way)

    pot, meet kettle.

  40. Troll, in case you haven’t noticed, I am never again going to respond substantively to any posts I recognize as yours, until such time as you have demonstrated some sustained cogency and self-control.

  41. does the “accessing” involve transmission and creating a new copy on the client’s computer screen? Do you have to scan the (proverbial) hard copy to make an electronic copy that you then store in you secure file?

    Your thoughts still impinge “copies.”

    The lure of electronics (quick and nearly perfectly exact copies) just does not excuse the acts of copyright infringement.

  42. If you purchase one copy of the article and store it in a secure (password protected) file that is accessible to both attorney and client. Would that be just one copy? Then submitting to PTO (fair use). So you only have to pay for one copy?

  43. The unspoken evil of Copyright:

    Derivation.

    Copyright is not as shallow as people suppose (and will be a rude surprise to all those anti-software patent folk if they “triumph” and make software only a copyright item (think no derivations for life plus 70, think statutory damages)

    Bwa-ha-ha-ha.

  44. If the “at least temporary killing of SOPA and PIPA” v. the passage of AIA is any indication, then the copyright industry is stronger than the patent industry.

  45. “The further problem here is that even if the additional copy would have been fair use, I suspect that your have agreed to contractually limit your fair use rights as part of your license agreement. If so, then making the copy will also be breach of contract.”

    Not if the contractual requirement is contrary to fulfilling legal obligations which it would be in terms of the “duty of disclosure” obligation. In my view, the copyright owners who are making threats because their non-patent literature is being cited to the USPTO to comply with 37 CFR 1.56, 1.97, and 1.98 (as well as case law) are way overreacing. If providing copies of copyrighted material to comply with these legal obligations isn’t fair use under 17 USC 107, then nothing is fair use.

    Also, there appears be an assumption that if the use being made of the copyrighted work isn’t controlled by the 4 factors specifically cited in 17 USC 107, then there can be no fair use. That’s not what 17 USC 107 says about these 4 factors which are identified as the ones that must be considered, but aren’t the only factors to be considered in determining fair use. If such “use” is necessary to comply with legal obligations, then such use should be considered “fair use” under 17 USC 107.

  46. The minimum number of non-patent references I provide to the USPTO in a typical new case is 10

    Ha. You are fooling no one you Office Troll. You do not submit any references to the USPTO since you work for the USPTO.

  47. It’s probably better to think of IDSes as part of the spec

    So close, up to that point. If they were made part of the spec, they would be admitted prior art. The benefit of the IDS is the § 1.97(h). Were you not paying attention earlier?

    Back to the tower with you.

  48. Inviting, why do you find it so hard to beleive “That listing provides an apparent presumption that the newly patented invention is a step beyond anything found in those references“? It’s all very logical. It comes straight from “The presumption of regularity of official acts.” Patents are only allowed over prior art, and specifically listed prior art, by being both novel and non-obvious over that art. Does it not follow that theclaims musty contain something more than the references? something that denotes the novel and non-obvious finding?

    Think before that “heavy” lifting.

  49. As an aside, with more and more journal articles having free internet access (such as through PubMed), it would seem they’d have to sort out which articles would be subject to the non-fair use copying first!

    I had a rather interesting experience last week– Previously I purchased a journal article which I am planning to cite in an appeal brief. The article was sent as a pdf file, which I saved. Much to my surprise about two weeks later, I could no longer open it– seems it had a time limit on it! I had to go back to the journal and pay a second fee for longer access.

    I wonder if this practice will start to become a standard one in the future… maybe one subscrition fee for time limited use and a higher one for more use.

  50. A court could go either way.

    Why? Show some substance instead of just merely proclaiming things.

    “Either way” is hardly a “big if.” “Either way” is an “if.”

    Or are you just pounding your paper tables again?

  51. Your lack of understanding is just not the same as “incomprehensible.”

    Dont’ you get tired fo the strawman bit?

  52. People pay to see the NPL in file wrappers any time they want to see them. A copy monkey over in Shirlington makes copies at $0.25 per page, payable to the USPTO. The copy monkey hands it to their boss who scans it in and then sells it to the law firm for $1-$3 per page depending on how bad they need it.

    This has been going on for 30+ years and no one has ever paid a penny to a copyright holder or given a darn about them. Even though you can see the NPL on PAIR at the office, no one outside of the PTO can. At least at places like the National Library of Medicine, the copiers have little downward facing stickers saying ‘this material may be copyrighted’.

  53. The PTO memo mentions several cases involving litigation exhibits. It looks like we are substantively safe in the 9th Circuit (procedurally, we will all get sued into the dust if the trolls persist). But couldn’t some bar association just give some money to a congressmen and buy another clause that specifically makes it a fair use.

  54. Be careful about buying articles on-line. Some on-line agreements permit the copyright owner to inspect all the computers in your office after you purchase an article, thus threatening any attorney client privilege or work product privilege for any files in your entire office. Then it all becomes discoverable.
    Also, according to the license, you might not be allowed provide the articles to the PTO after downloading without buying several additional licenses, because most articles cannot be uploaded in EFS (the fonts are not embedded, for example), so you have to print the article (that is a copy), then scan the article (that is another copy) and then upload the article (that is another copy).

  55. What part of the memo (that you didn’t read) do you disagree with?

    I don’t disagree with any of it. But the memo is simply an expression of the USPTO’s beliefs about what might be a reasonable intepretation of the law of “fair use.” The trxlls who have been shaking down law firms clearly have a different opinion about what sorts of acts can be considered to be “fair use” of their copyrighted material. They’ve probably already identified a preferred court in which to file a lawsuit and their favorite defendant. A court could go either way. That’s the “big if” I was talking about.

  56. “And, they need to work out a deal with the USPTO, so that the USPTO can, and does, provide a legitimate option to quickly obtain, via PAIR, the NPL from the electronic file history, with a “click through” CCC payment.”

    You honestly think that a person should have to pay to see the relevant references in a patent prosecution?

    I’m loling at you even though you can’t see me.

  57. The question this brings to my mind is who has the stronger lobbyists: a few copyright trolling publishers, or the entire patent prosecution industry?

  58. sockie: Your tendency for straw is showing in your attempt to misrepresent the comment to a point in time of recieving a cease and desist letter.

    Your tendency for trxlling is showing in your pathetic attempt to defend another sockpuppet’s incomprehensible comment.

  59. Malcolm, you really need to get a handle on your propensity to project.

    Here let me find and post the nizkor item:

    Nizkor said in reply to MM…

    Description of Straw Man

    The Straw Man fallacy is committed when a person simply ignores a person’s actual position and substitutes a distorted, exaggerated or misrepresented version of that position. This sort of “reasoning” has the following pattern:

    Person A has position X.
    Person B presents position Y (which is a distorted version of X).
    Person B attacks position Y.
    Therefore X is false/incorrect/flawed.

    This sort of “reasoning” is fallacious because attacking a distorted version of a position simply does not constitute an attack on the position itself. One might as well expect an attack on a poor drawing of a person to hurt the person.

    See: link to nizkor.org

    MM, please leave your strawman at the door.

    Reply Jan 21, 2012 at 08:53 PM

  60. Posner was recently questioned about his use of a photograph in a judicial opinion. In his view it was “fair use” because it would have no impact on the market for the image.

    I fail to see how submissions to a trial court would be analyzed any differently. And therefore submissions to the USPTO as the “trial court” for patent applications.

  61. sockie: Money funding the journal article is not the same as publishing the article on the internet.

    Thanks, sockie. Eating cheetos in your mom’s basement isn’t the same as being a patent attorney but you shouldn’t stop pretending for our sake.

  62. Money funding the journal article is not the same as publishing the article on the internet.

    More strawman from MM.

    Nice “stick-figure” that you have drawn on your paper table there Malcolm. You are really thrashing the crrp out of it. Must make you feel so good.

  63. That’s a big ‘if.’

    Why do you think that’s a big if? What part of the memo (that you didn’t read) do you disagree with?

  64. MM,

    C Little’s response is to Dennis on the point of agreeing to contractually limit your fair use rights as part of the license agreement. Clearly, the waiver (f)rom the license agreement is what the comment applies to.

    Your tendency for straw is showing in your attempt to misrepresent the comment to a point in time of recieving a cease and desist letter. Clearly, the proper path is to handle the issue when the issue arises, not later when you are being sued.

  65. Why do you feel that the Office’s statement is surprisingly bold? I have essentially the same statement from the Office on file from several years ago.

  66. The copyright owners need to rejigger their options under the CCC so that a safe and sane option actually exists at a reasonable price for patent practitioners… such as (a) single copy, (b) use of up to 5 reproductions at maybe $5 each, with a “freebee” for the copy of the publication submitted to the PTO.

    And, they need to work out a deal with the USPTO, so that the USPTO can, and does, provide a legitimate option to quickly obtain, via PAIR, the NPL from the electronic file history, with a “click through” CCC payment.

    It is time both the copyright and patent businesses play “grown up” rather than pointing fingers to the other guy, as in “its his problem” or the current USPTO stance: I’m not gonna deal with it”….

    Both of the current positions (exorbitant CCC fees and USPTO head in sand, no NPL docs available) are clearly not in furtherance of the advancement of science and the useful arts…..

  67. I think the idea is is that the big journal companies (like Elsevier, which owns something like 2,000 journals) would sue large patent law firms and make it up in volume. If there are 500,000 articles copied each year, then that’s 1.5 million copies within the 3 year statute of limitations for civil copyright infringement. If a given large law firm accounts for 1% of that, then that’s 15,000 instances, or a minimum of $11.25 million in statutory damages, apportioned between a handful of major journal companies. That looks pretty good, at least on paper, and the threat of that kind of result is what may induce law firms to start taking licenses.

  68. The other issue here, as you point out, is practicality.

    If you’re submitting one copy to the PTO, and that’s essentially all that can be proven, you’re talking about 750 in statutory damages (highly unlikely that the court would up the ante).

    So who is going to pay for these lawsuits?

  69. You seriously believe that the article wouldn’t exist if there “were no money to fund the journal in which it appears”?

    You have to remember, 6, that BJA probably also believes that if we didn’t allow people to patent new methods of tapping their touch screens to manipulate their hand-held computers, then nobody would ever come up with anything new in that “technology space.” Likewise, if we don’t allow people to patent methods of thinking new thoughts about old data obtained by old methods, “personalized” medical care will grind to a halt.

  70. If copies filed with the PTO are fair use

    That’s a big “if.” The argument that providing a copy to the USPTO is “fair use” may be compelling, but on its face it seems less compelling to me than the arguments that archiving a copy on a law firm’s system or emailing a copy to my client to review are fair use.

  71. You seriously believe that the article wouldn’t exist if there “were no money to fund the journal in which it appears”?

    Seriously?

    I just want to check that you aren’t trolling me before I tell you about how scientists and engineers were publishing their works before journals got good and started up. Even without the benefit of being able to publish the paper to the ENTIRE WORLD in a few hours on their interwebs for FREE.

    The only reason the journals are useful at all is that they provide a good forum for USUALLY VOLUNTEERS to peer review the paper pre-publication and then provide some basic formatting reqs and storage that really don’t mean sht.

    And the only reason copyright in this area (indeed in most areas) still exists is old people, corruption and tards. And I hope to be substantially rid of the first two in the next 30 years.

  72. There is a possible practical issue with suing a law firm for copyright infringement: to what extent can attorney-client privilege and the work-product doctrine prevent discovery of internal copies and copies shared between the attorney and the client? If copies filed with the PTO are fair use and everything else is effectively undiscoverable, then the copyright claims may be moot.

  73. Here, for instance, if it is very easy to obtain a license by simply paying a fee online and a number of patent applicants begin paying that fee regularly, an action that was once considered fair use may again fall under the copyright infringement umbrella.

    This presents a prisoner’s dilemma for the patent prosecutor: you can cooperate with other prosecutors and refuse to take a license, which is the best outcome if everyone else cooperates but a bad outcome for you if most prosecutors defect and you get sued for copyright infringement. Or you can defect by taking a license, which is the sure thing but suboptimal overall.

    In a typical prisoner’s dilemma the rational strategy is to defect. So my guess would be that law firms will start taking licenses, at least for internal copies.

  74. And the article wouldn’t exist if there were no money to fund the journal in which it appears LOL.

    Because it’s so expensive to publish things on the Internet. That’s why there’s no such thing as blogs. If alternate means for publishing information were available, we’d see people using those means. But the Internet is pretty much a desert when it comes to published information, as everyone knows, because of the enormously prohibitive costs of electronic publishing.

  75. And the article wouldn’t exist if there were no money to fund the journal in which it appears LOL.

    You’re so short sighted. You won’t be happy until you find a new line of work.

  76. CL Waiver rom the license agreement is quite easily obtained from the copyright holder in such cases.

    I’m not sure what you’re suggesting, CL. Are you saying that when I receive a cease and desist letter accusing me of illegally copying a reference that I’ve previously paid for and agreed not to copy, I just need to ask for a waiver from the licensee and everything is cool? There’s no need for any additional money to be spent?

    I’m pretty sure that is not what’s happening out there in the “real world.” It’s not about the “sky falling”, it’s about copyright trxlls and their middlemen slxxzebag attorneys shaking down other law firms. That’s all. And I have a pretty good idea about how this is going to end, by the way.

  77. Yes, I do know.

    When all else fails, make a currently-unsupported policy argument.

    At least it gets people thinking…and I’m sure one could cobble together case law indirectly on point, that supports the general principle.

  78. Waiver rom the license agreement is quite easily obtained from the copyright holder in such cases.

    The sky is still blue and still above your head.

  79. Consider this: You prepare a reexam, or MSJ re invalidity, featuring the patent owners copyrighted brochures. Those brochures anticipate the claimed invention by ten years. The patent owner refuses to grant you a copyright license. Does that mean you cannot provide the PTO or the judge with copies of the anticipating references. Yes, it does, according to the trolls. Unless you want to risk a civil copyright suit or even a criminal copyright case. The real answer is that fair use plainly applies to submissions to the PTO, the courts, and any other government agency.

    Dennis: can you post a sample of such a demand letter.

  80. but it is a voluntary action that is specifically solicited by the people through the legislative quid pro quo that is the patent system.

    I’m not sure “voluntary but profitable under the current legal system” is a particularly strong basis for fair use.

    Also, it’s too bad this didn’t come up soon enough to squeeze a statutory exception into the AIA.

  81. Dennis, do you have an idea at this point as to how many law firms which do patent prosecution have been contacted (I assume all the largest firms have been contacted at this point)?

  82. So $1500 to the trxlls for each new IDS, just for the reference submission to the USPTO which, in nearly every case, would otherwise never be purchased by me.

    And how many pennies of that end up in the pockets of the researchers who did all the work?

  83. As to the indexing. Meh, find the google patent with the ref cited then go to pair to look it up.

    I bet there’s a real cottage industry of people trying to obtain illegal copies of journal articles this way.

    LOL.

  84. DC I looked-into the CCC automated licensing system and found that they offered the right to make copies of a NATURE article (one of the journals taking action) for $32 per copy.

    Let’s see the client buys the copy. That’s $32 bucks for them. Then it’s $32 bucks to have a copy to their attorney/agent. Then $32 bucks for the agent/attorney to make a copy to send the USPTO. Then $32 for a copy of the submission to be saved onto the firm’s record-keeping system (after all, you don’t want to be accused of failing to submit that ref down the road …).

    So roughly $150 per reference submitted, if we play by the trxlls rules.

    The minimum number of non-patent references I provide to the USPTO in a typical new case is 10. So $1500 to the trxlls for each new IDS, just for the reference submission to the USPTO which, in nearly every case, would otherwise never be purchased by me.

    Does this seem like a scam to anyone else?

  85. “To be clear, it is possible to obtain non-patent prior art through the PAIR system. Maybe it’s not routinely made available for all cases but there is a lot of non-patent prior art available (i.e., “published”) by the USPTO online. The published art does not appear to be indexed in a way that it can be identified by the usual Internet search engines, however.”

    I thought I had seen at least some.

    As to the indexing. Meh, find the google patent with the ref cited then go to pair to look it up.

  86. I would settle for that as a stop gap to complete elimination.

    Every time I think about how much the sciences are curtailed by having a pay wall on every article I shudder a little. Pay walls of that sort kill kids who never get their new medication that is never invented because someone didn’t want to pay 20 bucks to read an article.

    And they justify it by saying there are publication costs. /facepalm.

  87. The further problem here is that even if the additional copy would have been fair use, I suspect that your have agreed to contractually limit your fair use rights as part of your license agreement. If so, then making the copy will also be breach of contract.

  88. In any case, the client pays for the articles I find.

    Correct me if I’m wrong, IBP, but they are paying for one copy. If both you and the client have a copy, then someone didn’t pay. What is the fair use exception there? Possibly if you immediately, permanently deleted your copy from your computer system after you sent it to the client you’d be merely acting as a delivery agent or something.

    Note: I’m not defending the copyright trolls or the copyright laws. This shxt is ridiculous. People tend to ignore it for good reasons, but not because they are “cheap”, not because they are trying to profit from someone else’s work, and not because they get a thrill out of stealing.

  89. IBP, fair points. Of course, it’s the sort of thing that these copyright trolls will only chuckle at. “Do you have any case law directly on point?” You know how it goes.

  90. As a part of my practice I do high-quality searches, which include searches of the scientific literature available in peer-reviewed journals.

    I pay for them every time, and their cost has soared over the past decade.

    Also, academics have for long copied entire articles for research purposes, and copying small excerpts of scientific writing has essentially forever been considered appropriate…

    But here’s the thing: IMHO there is no difference in the quality of a small excerpt from a scientific paper, and a plurality of such excerpts cobbled together, even to the point of cobbling them ALL together to re-create the paper in its entirety.

    In any case, the client pays for the articles I find.

    What about articles initially copied in support of a purely academic enterprise, that evolves a potentially-patentable invention that ultimately results in the submission of those copies, or new copies, to a patent attorney in support of the preparation of a patent application?

    Again, submission in support of that type of disclosure is specifically solicited by the people, through the government via the PTO. The government legislatively affords copyright protection through the copyright regime, and has eliminated the protections in certain public-interest situations.

    IMHO, this is one of those situations.

  91. “in the course of what is essentially a voluntary commercial enterprise”

    Yes, MM, but it is a voluntary action that is specifically solicited by the people through the legislative quid pro quo that is the patent system.

    It is a specific part of the bargain, of the social contract, and should be afforded legitimate protections necessarily attendant thereto.

    Like making a file copy of the entirety of the submission, including any submitted copyrighted works.

  92. Not a tremendous amount for a nationalmarket, but that may be enough to save the struggling scientific journal industry

    As with any other business, if you can’t figure out how to make money without sueing your customers regularly, you really don’t deserve to survive.

  93. I quote “You are in an intellectual Box.” And all the time he knew that my GED was erased. How’d a ever thunk? Probably one of the most hurtful things ever done to me, they took my self respect!

  94. 6–

    I don’t share your belief that copyright law is nonsense, but I do believe that the “literary” value of a peer-reviewed scientific journal is de minimis, while its “artistic, dramatic, or musical” values are nonexistent, the result of a serious intention to eliminate them.

    What is the “literary” merit? There is no plot, no characters, no setting, etc.. Is it reduced to the arrangement of information on a page, like a phone book or business form?

    There are standardized accepted formats for peer-reviewed journals, to which I have submitted many papers myself. The form of expression is severely curtailed, for purposes of consistency, scientific clarity, and to facilitate review. Even sentence, paragraph, and argument structure optimally rely upon a purely mechanical approach designed to remove any and all ambiguity, clarity, shades of meaning and understanding that form the very basis of artistic expression.

    I think that any copyrightable merit has been reduced through the assiduous application of “the crucible of science” to a de minimis or non-existent state, and that such works, instead of having that considered at the damages stage, should be removed entirely from the realm of copyright as a policy matter, by legislative action.

  95. I’m very glad to see you highlighting this issue, Dennis. My dream is that these copyright trolls (and their middlemen attorneys) will rot in hxll for this.

    it was because of potential copyright concerns that the USPTO decided not to make available non-patent prior art through the PAIR system.

    To be clear, it is possible to obtain non-patent prior art through the PAIR system. Maybe it’s not routinely made available for all cases but there is a lot of non-patent prior art available (i.e., “published”) by the USPTO online. The published art does not appear to be indexed in a way that it can be identified by the usual Internet search engines, however.

    That said, the real issue for anyone submitting non-patent references to the USPTO is this one:

    The USPTO took no position on whether applicant’s creation of file-copies and internal distribution of copies also qualify for the fair use defense. In addition, applicants who have obtained limited licenses to works may be under a contractual duty to avoid making further copies even if those copies would have been fair use.

    To buy a copyrighted reference “legitimately” from one of the publishers, you have to agree to a license that forbids you from making any copies except for the purposes allowed for in the copyright statute. There is no express “USPTO submission” exception in the statute, nor is there any clear exception for submitting to the government an arguably required copy of a copyrighted document in the course of what is essentially a voluntary commercial enterprise (obtaining a patent). It’s not entirely clear that a client could legally email a reference to send to his lawyer without paying for that as well, or that the attorney could instruct his secretary to save the email with the reference to the firm’s data storage system without paying for yet another copy.

    It seems to me that the closest analogy is the submission of copies of copyrighted material to courts during litigation. Surely such documents are typically no less available to the public (in the form of copies provided to the public by the court) than anything submitted to the USPTO. And my guess would be that there are cases that dealt with this issue in the litigation context …

  96. “It was because of potential copyright concerns that the USPTO decided not to make available non-patent prior art through the PAIR system. However, the USPTO has offered its position that it is fair use for the agency to make paper copies of the copyrighted works. .”

    That is fed up. Should make em electronic. Sticking to old timey methods should be no defense to copyright infringement aka fair use.

    “Not a tremendous amount for a nationalmarket, but that may be enough to save the struggling scientific journal industry.”

    Lol wut? The PTO is now the savior of the sci journal industry? Come on.

    “A number of scientific journals have begun to threaten law firms and their clients for submitting copies of journal articles to the USPTO. ”

    Good, more power to them. The more annoying they are to the lawltards the quicker the demise of that guild age nonsense known as copyright lawl.

  97. post got eaten…

    IANAE–

    Supplied refs are part of an application, examination of which shall be made. Cited refs are different from non-cited refs; this is relevant to IC, which is important.

    copyright–

    Agree that PTO copies are fair use.

    Patent attorney copies are also fair use, if considered merely part of a copy of the entirety of the submission, made for obvious purposes in support of a public function of the PTO.

    etc.

  98. “That listing provides an apparent presumption that the newly patented invention is a step beyond anything found in those references.”
    – sounds to me like a presumption without basic facts ;o)

  99. So it is your opinion that the grant of patent rights presumes that the contents of listed references are known to the PTO to disclose something less than do the claims?

    I thought the grant of patent right presumed that the contents of all the prior art in the world discloses something less than what is claimed. DC’s claim is considerably weaker, and I don’t know why it’s controversial at all.

    Especially since he didn’t say “known to the PTO to disclose”, which I assume you only threw in as a slight against examination quality generally. We all know examiners don’t read the references. It’s probably better to think of IDSes as part of the spec – you file a list of numbers, it shows up in the B publication.

  100. I knew that would be a controversial line. My perception is that patent owners would rather have references listed on the patent so that they can make the claim that the examiner duly considered those references and still decided that the invention was patentable.

  101. “That listing provides an apparent presumption that the newly patented invention is a step beyond anything found in those references.”

    Really, Dennis?

    So it is your opinion that the grant of patent rights presumes that the contents of listed references are known to the PTO to disclose something less than do the claims?

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