Copyright: Lawfirms Sued for Submitting Prior Art to the USPTO

  • John Wiley & Sons and American Institute of Physics v. McDonnell Boehnen Hulbert & Berghoff (MBHB) (N.D. Ill.) (Complaint)
  • American Institute of Physics and John Wiley & Sons v. Schwegman Ludberg (D.Minn) (Complaint)

The Hoboken publishing company (John Wiley) and the non-profit American Institute of Physics have continued their quest to pursue copyright infringement charges against US patent attorneys who submit copies of journal articles to the US Patent Office during the patent application process. The submission of those documents is required by law and attorneys who fail to submit known and relevant prior art can be subject to ethics charges and the associated patents held unenforceable. Earlier this year, the US Patent Office issued a memo indicating its belief that copying and submitting copyrighted documents should be considered a non-actionable fair use.  Firms already pay for access to the articles and the USPTO also has its own access to most of the articles. The issue is whether the patent applicants must pay an additional fee for making a copy for the USPTO and an additional copy for the in-house file.

The first two law suits were filed yesterday. The first against my former law firm MBHB LLP in Chicago and the second against the Schwegman firm in Minnesota.  These two firms are known for the high level of scientific and technical expertise of their attorneys.  (Full Disclosure – MBHB is the primary advertiser on Patently-O)

The complaints allege two particular infringing acts:

14. In connection with researching, filing and prosecuting certain patent applications, McDonnell made and/or distributed to the United States Patent and Trademark Office (“PTO”), and perhaps others, unauthorized copies of copyrighted articles from plaintiffs’ journals … Such unauthorized copies were used for the commercial benefit of defendants and their clients.

15. Upon information and belief, defendants made (a) additional copies of the copyrighted works that defendants included or cited in their patent applications to the PTO, including those identified on Schedule A, and (b) copies of plaintiffs’ copyrighted works that defendants considered in connection with those applications, but did not ultimately cite or provide to the PTO. Plaintiffs cannot know the full extent of defendants’ copying without discovery. Apart from the copying of plaintiffs’ works accompanying the patent filings described above, this internal copying infringes plaintiffs’ copyrights.

In his article for PaidContent, Jeff Roberts sees these two as “a test-run. . . . If the firms fold their cards and settle, John Wiley and the physicists may be emboldened.” (See also Zach Winnick at Law360).

In the complaint, Wiley identifies two articles that MBHB allegedly submitted to the USPTO:

  • Raznikov, V., et al., “A new approach to data reduction and evaluation in highresolution time-of-flight mass spectrometry using a time-to-digital convertor datarecording system,” Rapid Communications in Mass Spectrometry, vol. 15, No. 8, pp. 570-578 (2001); and
  • Erchak, A., et al., “Enhanced coupling to vertical radiation using a twodimensional photonic crystal in a semiconductor light-emitting diode,” Applied Physics Letters, vol. 78, No. 5, pp. 563-565 (2001).

The complaint in the Schwegman case are based upon these two articles:

  • McDonald S., et al., “Photoconductivity from PbS- nanocrystal/ semiconducting polymer composites for solution-processible, quantum-size tunable infrared photodetectors,” Applied Physics Letters, vol. 85, No. 11, XP012062554, ISSN: 0003-6951, pp. 2089-2091, (Sep. 13, 2004); and
  • Greenwald, et al., “Polymer-Polymer Rectifying Heterojunction Based on Poly(3,4-dicyanothiophene) and MEH-PPV,” J. Polym. Sci. A: Polym. Chem., vol. 36:17, pp. 3115-3120, (1998).

I have contacted the authors of each of these articles, but have not yet received any response. MBHB’s managing partner Marcus Thymian released a statement referring to the USPTO’s position on fair use. “We note that the United States Patent and Trademark Office has released its position — that it is a fair use for a patent applicant to submit a copy of non-patent art to the patent office to fulfill the disclosure requirement imposed by the patent regulations.”  It will also be easy for the law firms to obtain an opinion that internal copying also qualifies as a fair use under Section 107 of the Copyright Act. 

In a statement to Law360, the plaintiffs attorney Bill Dunnegan appears ready to admit – despite language in the complaint – that submissions to the USPTO are not actionable.  He is quoted as saying “The crux of what our case deals with is the internal copying by the law firms after they have one copy in their hand. . . . Those copies are not licensed, and the patent office didn’t take a position on whether or not fair use would apply to those copies.”  The copy-for-file issue seems to fall in line with the Supreme Court’s analysis in Sony v. Universal (1984). In that case, the court held that it was a fair use for home consumers to record television broadcasts so the consumers could view the shows at a later time. 

Notes:

  • Submitting Citations: Several years ago, the USPTO realized that it already had copies of all issued US patents within its in house databases and asked patent practitioners to stop sending-in copies of patents. Rather, the patent attorneys were asked to simply submit a list of US patent documents that materially related to the patent being examined.  To the extent that the USPTO already has access to many of the publications in question here, a similar solution could work that allows patent practitioners to simply submit the citation to articles within the USPTO databases.
  • Open Access: Depending upon pricing structure, access to a journal such as the Journal of Applied Physics costs as much as $15k per year.  Academic authors generally receive no compensation for publication and there is a growing movement amongst academia toward open access journals.  Almost all law reviews make their works freely available online.  This enforcement project may push the sciences in that direction as well.

255 thoughts on “Copyright: Lawfirms Sued for Submitting Prior Art to the USPTO

  1. 6, there are a great deal of references to epi-genetics on google. And quite a substantial collection of lectures on youtube, although I have not seen them. I assure it is not fantasy. As far as cells being facilitators of energy, well this is basic biology. You do remember that cells have an antenna so to speak that picks up signals in the environment and then communicates those signals to the DNA of the cell and other cells don’t you? If you have a sincere interest in learning the basics, may I suggest you do some reading and then return to the discussion with your questions. Right now you have not demonstrated enough command of the topic to even pose a specific question, let alone a credible challenge.

  2. I take that risk itself is a mathematical abstraction, thus balancing of risk according to new math is nothing more that manipulating a mathematical abstraction.

  3. “I am discussing a branch of Quantum Biology, known as Epi-genetics so that our friend 6 may understand why cells at their essence are essentially energy. Epi ( meaning epidermis) and (genetics) meaning the gene. The term is loosely translated as, “above the gene”. Now, 6 and I had a conversation in the thread of another article about cells being facilitators of energy and this is how Epi-genetics entered the picture.”

    So, you’re discussing a branch of actual science that in no way implies or states that cells “at their essence essentially are energy” but does sort of, in an only slightly messed manner of understanding it, imply that cells are “facilitators of energy”. And we discussed it in a previous thread that only you remember so that is how it “entered the picture”. And you do not feel obliged to point us to even the tiniest shred of a publication supporting these outrageous nonsensical claims so that we may indulge your fantasies by reading them and becoming as enlightened as you are.

    Gotcha. Wonderful AI. Great work. Great trolling at any rate. You sir are undisputably a master. How you doing on the perscription I gave you bro?

  4. First, both did not apply “new” math to an old process. Its not like they invented and used for the first time, Calculus.

    Bilski had nothing but applied math, thus it was easy for this Court to identify and declare his invention (math) a judicial exception.

    So you see, Its still simple no matter how hard you try to make it.

  5. …regulations applies to the government and how it conducts its business. Law is different.

    Seriously? 37 CFR applies to the government but doesn’t apply to you and your clients? 26 CFR (the tax regulations) don’t apply to you?

    Can you tell us the difference?

    Yes I can, Ned. But can you? And can you give any reasoned basis for your notion that a fair use analysis might turn on a distinction between obligations imposed on you by statute and obligations imposed on you by administrative regulation authorized by statute? I’m seriously interested in your theory.

  6. One more point, AI, is that since both Bilski and Diehr apply new math to an old process, one must inevitably look to the nature of the process for the reason why the one passed 101 and the other did not. 

  7. Look, Actual Inventor, I actually agree with you that the Bilski claims represented and application of mathematics to a practical problem. That's why so many people are puzzled by the decision.

  8. please do stay on topic and know what you are talking about, before your speak.

    You cannot ask this of Ned. To do so would be to remove his drunken swagger. How would we believe the post to be from Ned without the trademark off topic BS?

  9. There is nothing wrong with the 9 Justices in Bilski. The 9 Justices in Bilski are simply wrong according to the Supreme Court.

    It’s the Supreme Courts job to tell the ( CAFC) when they are wrong.

    So if one reads the decision carefully, then according to the Supreme Court even if a claim passes the DCAT it can fail for simply being a judicial exception, in this case math.

    Even though the “math” in the Bilski patent “application” involved physical acts of communication such as speaking, writing and reading, those acts apparently do not remove “math” from the judicial exceptions.

    What’s important to understand here is that the Bilski decision is limited to the particular application of math in that specific patent “application”, and cannot be extrapolated to ALL applications of math, and especially all applications of processes, including those for conducting business or designing software.

  10. Ned: 6, I don’t believe that AI could possibly be talking about the entropic theory of gravity that you linked to a few months ago.

    AI: You would be right. That is not what I am discussing. I am discussing a branch of Quantum Biology, known as Epi-genetics so that our friend 6 may understand why cells at their essence are essentially energy. Epi ( meaning epidermis) and (genetics) meaning the gene. The term is loosely translated as, “above the gene”. Now, 6 and I had a conversation in the thread of another article about cells being facilitators of energy and this is how Epi-genetics entered the picture. So if you wish to participate Mr. Heller please do try and keep up and stay on point.

    Ned: “Regardless, I think AI would have a hard time justifying one of his applications if it required proof of an untested quantum theory of mass in order for his claims to be based in this universe. Next he will be arguing that a claim counting the number of Angels dancing on the head of a pin based upon his assertion, citing the Bible and other such literature, that Angels are real, and so on. I would think the PTO would like a demonstration.”

    AI : Your above comment is totally irrelevant to the discussion at hand. I do not even think 6 is making such an argument. None the less you do need to understand that a fundamental canon of patent law simply requires an application of a concept in order to find an invention as statutory subject matter. Understanding this basic rule has great implications for what is and is not an un-patentble abstract idea. If you want to continue to participate please do stay on topic and know what you are talking about, before your speak.

  11. Do you really think the Bilski decision is a good one?

    That decision was written for a majority decision by Stevens, who lost his majority and could not retrieve it.

    It is a piece of crrp.

  12. Simple, I see.  The Bilski claims pass the DCAT as enunciated by AI.  Therefore, either there is something wrong with all 9 Justices in Bilski who were unanimous on agreeing that the Bilski claims were abstract, or there is something wrong with the DCAT.

  13. Easy. It does not fail the test.

    The easy conclusion is that the Bilski decision was wrong. Since the claims do distinguish from the Supreme Court’s extra-legislative additions to patent law (see the recent Golan decision for the proper attribution of who sets law), the Supreme Court has reache dbeyond the constitutional mandates that they have say over and their decision lacks to the force of law.

    That’s the easy part. Actually enforcing the correct decision, now that’s the difficult part.

  14. 6, I don’t believe that AI could possibly be talking about the entropic theory of gravity that you linked to a few months ago.

    link to en.wikipedia.org

    Now that was a real mind blower. He seems to instead cite to something discussed on PBS 12 years ago.

    Regardless, I think AI would have a hard time justifying one of his applications if it required proof of an untested quantum theory of mass in order for his claims to be based in this universe. Next he will be arguing that a claim counting the number of Angels dancing on the head of a pin based upon his assertion, citing the Bible and other such literature, that Angels are real, and so on. I would think the PTO would like a demonstration.

  15. I’ll tell you what AI, if you will be so kind as to draw my attention to some published literature on the topics about which you are currently making sht up about then I will read them. Perhaps you’ll even learn something about them when you look up the pubs to show me.

    In the mean time, do stick to the perscribed regimen.

  16. 6: “No AI I have not studied “Quantum Biology” or subsections thereof”

    AI: I see. Then you are not yet fully competent to make up theories (e.g. your pre-emption doctrine) about a claim covering an abstract idea, are you?

    May I suggest you start with the basic post Einstein precept that says, “everything in energry”

    After all, until you understand what is real, and what is not, based on objective testable scientific evidence you are really in no position to deviate from that science, or the law that it influences.

  17. No AI I have not studied “Quantum Biology” or subsections thereof so that I can understand/realize whatever nonsense you are currently pulling directly out of your arse. Nor have I tried to understand how a barely non-zero mass particle from the sun such as a neutrino supposedly “helps to give the earth and everything in and on it mass and form”. Nor have I decided that answering essay questions proposed by you is a good use of time. I also do not care about any of them.

    What I did do however was perscribe you a treatment regimen for your trollitus. Have you been adherring to it rigorously? You don’t seem to be showing signs of improvement. Indeed, your rate of trolling appears to be quite steady and that is never good.

    Perhaps we should ask my colleagues: do I need to perscribe a regimen with more bass?

  18. Simple, applied math?  

    Apply this test to the Bilski claim below please!  Below are the steps of the Bilski claim, summarized, from Wikipedia*.  Give me a blow-by-blow why the claim below fails your test.

    initiating a series of sales or options transactions between a broker and purchaser-users by which the purchaser-users buy the commodity at a first fixed rate based on historical price levels;identifying producer-sellers of the commodity; andinitiating a series of sales or options transactions between the broker and producer-sellers, at a second fixed rate, such that the purchasers' and sellers' respective risk positions balance out.

    Just how is it that the "math" is not applied to balancing risk?

    link to en.wikipedia.org

  19. The easy answer is that there is a clear difference between math and applied math.

    That’s it in a nutshell.

  20. AI, may I ask you a question? If every judge of the Federal Circuit and the four Justices in dissent all agree that the five-justice major in Bilski did not explain WHY the claims in that case were abstract, how is that you know, and say so with aplomb, that the problem with the claims there was MATH?

    Math! you say; but even as you say this, you also acknowledge that the Diehr claims also involved math. So, why were the Diehr claims not abstract and the Bilski claim abstract when Math was at their core in both cases?

    You have advocated countless times that the holding in Diehr could be described as DCAT. If you could, would you apply the DCAT test to Bilski? Does it pass or does it fail, and why? Your reasoning is what we really need.

  21. I mention the word law here for a reason. Rules are not the law.

    Really? By “rules” I assume you are referring to federal regulations, right? Those are not law?

  22. 6 did you ever go study Quantum Biology so that you may understand why cells at their essence are essentially energy/?

    Did you read the sub sections on epi-genetics so that you may realize that cells receive their operating instructions from energy signals in the environment?

    Have you even tried to understand why the solar neutrinos discussed in the 2000 PBS documentary are the same neutrinos that flow thru the earth and everything in and on it to help give it mass and form?

    And finally I expect to see you answer the following essay question:

    How do these 21st century breakthroughs in science and technology factor into the PTO examiners analysis of 101 statutory subject matter and the definitions of un-patentable abstract inventions?

  23. “banning paid for subscription journal services” is “one small step at a time.”

    Anyone see this as NOT a small step?

    Anyone?

    Bueller?

    Bueller?

  24. Yes, it does go a bit further than the instant case, but it only goes appropriately further as I noted. You, on the other hand wish to solve all the world’s problems in one fell swoop. I advocate taking it one small step at a time.

  25. anon, I agree with both your posts.

    I also see from one of your posts that you pride yourself in being able to talk sensibly to me …well I agree that I can be tough. But, I do appreciate your efforts to engage rationally.

  26. Anon, I agree.

    However, the Office memo assumes that without a “license” that the owner of a copy can make a copy and send it to the Office just as the Office can make a copy and send it to the applicant.

    If this is there real position, they need to get in there and defend their position by intervening and defending its legal position.

    However, I don’t think that will happen. If they go to Justice, Justice will not back their fair use opinion, IMHO. What the PTO seems to be doing, rather, is using eminent domain to conducts its business. But they need to pay the copyright holder in the court of claims.

    Law firms can make their own beds.

  27. More, please.

    Hey “tell me”, don’t go yet–what if you make the “office copy” before you actually transfer the first copy to the PTO? i.e. before such time as it actually forms a part of the “official record”?

    And, further to anon’s point, don’t the initial contractual obligations endure relative to that first copy that you purchased and transferred to the PTO? After all, the subject-matter of the contract is preserved–you are still copying the same copy that you purchased, to which the contract obligations would pertain.

    Still sounds like copyright laundering to me, but I see your point, I think; but I also think that it needs more work.

  28. I do not believe that “most litigators” would behave or ask as you have, and would listen to opposing counsel, perhaps intently so.

    Your response to “TmiT(a)” is as juvenile as is the provocation. Being so easily riled is not a good trait for a litigator, and neither is the unwarranted braggadocio. There are often times on this blog that the juvenile postings are better than those from whom think they are above the fray, that their opinions are gold merely because the comments come from such ‘maturity.”

    I do thank you for listing a fact pattern. Let’s take a closer look.

    • Legal purchase under contract.

    o Excellent. Then you admit to all of the contractual requirements, including the possibility of contracting away fair use rights (you have left this fact out, so I am filling it in for you).

    • Legal transfer to PTO of same copy under 17 USC 109.

    o Excellent as well. By legal transfer then, you accept all contractual obligations involved in said transfer. These legal points may include, but not be limited to: no electronic transfer and no creation of secondary copy. Rather important facts that must be established, of course.

    • Even if PTO is a successor bound by the initial sale contract, PTO doesn’t make any copies, and lawfully possesses.

    o Fantastic. I do not doubt that the PTO is an entity that lawfully possesses the copy according to the stipulated facts.

    o However, not all is so fantastic. You state as a fact that the PTO doesn’t make any copies. This is an unwarranted fact, and is the source of a very large potential issue. Your position here is unsound.

    o As copy is lawfully possessed by the PTO under the fact pattern, your arguments under 44 USC 3301 are duplicative and unnecessary. Your position on relevancy is itself irrelevant, as there is no controversy to attach your argument to, given the fact pattern.

    o The copy’s role as part of the official agency record, however, does not extinguish rights earned under copyright law. The four factors are not to be mechanically applied, and even the Bernard J. Knight, Jr.’s memo admits this. Your position here is conclusory and you have not shown that your statements warrant that conclusion. I am not arguing any difference in facts. I merely point out your error in law.

    • Copying of official agency record by party to the proceeding is fair use under 17 USC 107.

    o Fantastic. However, this fact very much depends on who the party is and if that party has voluntarily contracted away any such Fair Use rights. Thus, under the facts given, your facts, this conclusion is false – or at a minimum, its truth is not established.

    • I’m not going to get into FRCP, or why access to evidence in an agency proceeding is fair use. Go to law school if you want to find out.

    o You see? When you get uppity, you get sloppy. No one ever said that access to evidence in an agency proceeding is not fair use. But I am sure that you too went to law school and covered contract law. As a competent litigator, do you see where this leads?

    • even if access to evidence didn’t by itself create fair use, it’s still fair use as it is…

    o Same trouble with this fact pattern – The mere presence of the item being fair use does not absolve the contract obligations. So even taking your position as true for argument’s sake, you still may lose. The case is indeed NOT CLOSED.

    o But let’s take a closer look (at least a preliminary one) at the four factor test you gloss over. Since this is law applied to facts, rather than mere facts, I presume that you will no doubt allow me the honor of arguing, rather than shouting CASE CLOSED.

     You use the statement “it’s still fair use” without qualifying just what “it” is. As mentioned above, there is more than one use in play. To go any further into the analysis, you must be clear which use you are discussing, as each use will be subject to the four factor test separately and that test will not be applied mechanically (as opposed to much of the mechanical application in the Bernard J. Knight, Jr.’s memo.

     For strictly examination purposes, I would fully grant that the Office, with its legal copy can use that copy for examination.

     For any other purpose, the Office use of that legal copy may be problematic. Those other uses must be designated in order to apply the four factor test. Do you care to designate and augment your “last post” in order to fill in the gaps? I would note that good litigators avoid the use of such rhetorical tools that can so easily backfire.

  29. Last post.

    Legal purchase under contract.

    Legal transfer to PTO of same copy under 17 USC 109.

    Even if PTO is a successor bound by the initial sale contract, PTO doesn’t make any copies, and lawfully possesses.

    Copy possessed is a part of the official agency record under 44 USC 3301, as a result of it being “…preserved or appropriate for preservation by that agency…because of the informational value of data in [it]…”.

    As such, it is “…evidence of the…decisions, procedures, [and] operations…of the Government [PTO]…”

    It is relevant under FRE Rule 401 to any dispute with the PTO that arises as a result of its contents, and can even be self-authenticating if certified pursuant to FRE Rule 902(4).

    Copying of official agency record by party to the proceeding is fair use under 17 USC 107.

    I’m not going to get into FRCP, or why access to evidence in an agency proceeding is fair use. Go to law school if you want to find out.

    And even if access to evidence didn’t by itself create fair use, it’s still fair use as it is 1) not directly or immediately commercial, 2) the expressive content of a technical journal is de minimis, 3) the work is used for its scientific content and not for how that content is expressed, and 4) the effect on the potential market value is absolutely zero, because the party who initially purchased and transferred it to the PTO is already aware of its contents–they could have made notes about it all–access to a copy is a mere formality to avoid confusion in communications between the party and the PTO, and the use has absolutely no effect on the potential market value of the work.

    Get a job, blogger, but make sure it’s not in lit, you wouldn’t last 2 minutes in a room with litigators.

    Out.

  30. I leave the next move up to him.

    Didn’t you pay attention, Anon? “CASE CLOSED” yelled the unwashed man on the soapbox at the street corner. He has already tried the case in his mind and has his aluminum foil-clad fact pattern completely locked up.

    He is the one that has got all the answers.

  31. Did I ask you to tone it down?

    No.

    I love that you are all hot and bothered. It amuses me that you rant so. Your anger clouds your judgement and makes your posts all the more humorous, as they continue to be made of the stuff of vacuum.

    You gave your version of the facts? Really? Sorry, I missed the fact as to how the applicant got his hands on the copy of the copyrighted material. Did he have a bootleg version (a pirated version)? Because if he had a legitiimate version, then he would have a signed contract license, right? You kind of left out that fact (it’s sort of an important one).

    It’s a bit difficult to disprove the gaping holes in your position, but I am sure your waltzing into the court and merely (loudly) proclaiming “I AM RIGHT” will win the day. Must work every time you actually show up in a courtroom or settlement conference (at least in your own precious mind). Would those facts possibly include the express contracting away of a fair use – even a legally based fair use? Oops, you did not cover that possibility, did you? In your haste and anger to boldly proclaim THE FACTS, you may have overlooked a CRITICAL FACT.

    You can’t even follow a simple fact pattern

    Wow, that must make you feel really silly then, as you cannot even provide a cognizant (read that as a full fact pattern required to actually reach your grand and glorious BOLD PRONOUNCEMENT of CASE CLOSED.

    Remind me to hire the kid before I even consider hiring you and your vain tendencies of oversight and merely winning cases in your mind.

  32. “The first against my former law firm MBHB LLP in Chicago and the second against the Schwegman firm in Minnesota. These two firms are known for the high level of scientific and technical expertise of their attorneys.”

    I’m not aware of those firms having any greater technical expertise than any other firm. Good thing he at least notes the conflict of interest with his former employer and current primary advertiser.

  33. Whoever you are, you should get off blogs and get into real life.

    Dialogue? Tone it down? Rhetoric?! What a joke.

    I gave my version of the facts. You’ve done nothing to disprove those facts. The law as written, as interpreted by the PTO, and as applied to those facts, permits a copy of the official agency record by a party to the proceeding.

    You think you’ve got all the answers.

    You can’t even follow a simple fact pattern, no wonder you’re on a blog. The post wasn’t for you, why don’t you forget about it.

  34. It’s irrelevant that it may be for the benefit of the party who occasioned that record.

    Such dismissal of one of the four factors shows you are clueless.

    It’s not under an actual or a constructive secrecy order or obligation of confidentiality that excludes the party specifically affected

    No such secrecy order need be present for a copyright violation to occur. The point of obligation is a fact that you have glossed over, as that obligation does in fact exist with the license agreement for the copyright material. It must be difficult to try so hard to be so clueless.

    as said party would have knowledge of the contents,

    A meaningless comment, showing again how clueless you are. Knowledge of content is pertinent how exactly? Yeah, thought so.

    Copying a government record for the protection of the primary party to which said record pertains

    You don’t get it do you. The public for which the government makes copies is not a primary party. Making copies for the public is not a legal requirement for the government and thus is an action not bound to the legal fair use argument. The government chooses to make such copies. If you are sued, then and only then do you become a primary party. Then and only then, under a court’s supervision which can include bounds of secrecy would a copy be for a legal purpose.

    The Office dichotomy of not making copies accessible over the internet but making paper copies avialable for cost cannot be squared as the manner of making copies has nothing to do with the fact of making copies. If the Office truly believed their line about paper copies, there would be nothing to stop online access. So please, Mr. Holy Roller Tell Me Where I’m Wrong, tell me about these facts. That is, when you are done being a tourist on your guided tour of courtrooms and settlement conferences.

  35. “The copy-for-file issue seems to fall in line with the Supreme Court’s analysis in Sony v. Universal (1984). In that case, the court held that it was a fair use for home consumers to record television broadcasts so the consumers could view the shows at a later time.”

    no way. in the 1980’s consumers might only get one chance during their entire lifetimes to see a particulat TV broadcast, so making a vcr recording for later watching can make sense. the science articles are available upon request. big difference.

  36. Also, as an aside, the Office theory is flawed

    That’s being generous. “Self-delusional” would be more descriptive.

  37. Please excuse the serial posts, as Tell me where I’m wrong seems to want to be told where he is wrong, even as I have posted “try to remember that you are on a blog discussing general legal issues and you do not necessarily have a full or even a limiting single set of case facts under consideration.”

    So we may perhaps be exploring, not general legal issues, but perhaps a full (and thus limited) single set of case facts.

    Or perhaps Tell me where I am wrong merely will respond with a rather meaningless “Yeah, just like I thought–no proof at all.

    I leave the next move up to him.

  38. Here too, FTC, I may have need of this point, if the facts are laid out in this direction in my future dialogue with Tell me where I’m wrong.

  39. Lionel,

    I think you will agree that it has been established that you can legally contract away your Fair Use rights.

    I say this, not to rub your nose in any mistake, but to establish this for my future conversation with Tell me where I’m wrong.

  40. FTC,

    Let’s see if Tell me where I’m wrong is willing to complete the characterization. It may be instructive to see which cases are easy to prove one way (or the other) and which cases perhaps not so easy.

    After all, “real lawyers” – even real “kid” lawyers know that copyright cases and especially “[f]air use determinations are not based on a mechanical application of the four non-exclusive fair use factors” Bernard J. Knight, Jr.’s memo, page 2, citing Campbell v. Acuff Rose Music.

    Tell me where I’m wrong,

    I think it important to lay out the facts prior to announcing what the issues are. Otherwise I think that we may not be addressing – or perhaps even perceiving – the same issues.

  41. Attempt to fix bold tag.

    Tell me where I’m wrong,

    Have you supplied an answer to TMIT’s question of:

    Tell me, “Tell me” have you ever seen, read, signed, or dealt with contracts dealing with copyright of technical information from the likes of which this case is grounded upon?” I have. I want to make sure our dialogue is grounded in some commonality. While not absolutely critical, we may find it helpful.

  42. 6,

    It does not.

    However, it is silent as to the effects that may occur between the copyright holder and the applicant.

    From Bernard J. Knight, Jr.’s memo Section II:

    To the extent applicants have obtained copyrighted NPL pursuant to a license, applicants are responsible for ensuring that the license is not inconsistent with fair use.
    (emphasis added)

    Of course, this needs to be translated from Office-speak. What it is saying is that if an applicant has signed away its fair use rights in order to obtain the copyrighted NPL in the first place, that applicant cannot violate its contract in order to live up to its responsibility to the Office.

    Or the shorter version: Tough nougies guys.

  43. SFreptile,

    Do you think that those who own the copyright would allow unauthorized access to a cloud version when they make their money with heavily controlled access now?

    I think you have assumed a key point (a legitimate copy will be in the cloud that such a pointer would work) that makes the issue a non-issue. Then again, I am assuming (rather dangerous, I grant you), that you mean a pointer that works free of charge or other contractual obligations. I assume this because if that is not the case, then you are really no better off than you are today. By the way, I have negotiated copies, contracts and waivers “in the cloud.” It really does not suit to “mystify” the “cloud,” as it is merely a transport mechanism and the legal issues lie deeper.

    If only all legal problems were that easy to solve.

  44. Tell me where I’m wrong,

    You clamor for proof and finality, and seemingly boast that your detracters have not “stepped inside a courtroom or a settlement.” I do hope that you comport yourself better in either venue.

    Is there a particular point about what I have posted that you find offensive? Any particular point that you think to be in error?

    Even as I have attempted to engage Ned in dialogues on very difficult subjects, I’m willing to flesh out our dialogue, even if you are not willing to tone down the rhetoric. But toning it down would be better.

    Are you willing to tone it down? Are you willing to engage? Or do you merely want to stand atop a soapbox?

    If you so decide to engage, let’s set your fact pattern so that we may prove or disprove your contention, shall we?

    Would you like me to state the facts (as I understand them), or would you like to take a shot at establishing a starting point?

  45. Get back to me after you’ve stepped inside a courtroom or a settlement conference, kid.

  46. “How can the government contend that it has a right to make a copy of a reference and send it to the applicant in making a rejection, but that the applicant has no right to submit a reference to the government as part of an IDS?”

    I doubt it takes that position.

  47. I said take the meds every hour and see me in a monnth, not see me every hour and take your meds in a month. A little less backtalk and a little more taking your meds old man.

  48. Why tell you when you either won’t listen or don’t comprehend the legal issues at hand?

    You keep on saying “prove it to me, prove it to me” and “it’s an official record” as IF that is dispositive.

    Do you have a clue how clueless you sound?

  49. Well I cannot say that I have not belabored many sleepless nights on this point about 14 years ago. I know how this will come out, I am just unsure as to the theory. I would move to dismiss upon 12(b)(6). I would allege that any prior art copied was in furtherance of submitting the same to the USPTO pursuant to 37 CFR 1.56. As a result, I was operating as an agent of the Federal Government and the real cause of action is one under the Tucker Act for a taking. Secondly, I would submit that as an agent of the Federal Government I am entitled to qualified immmunity. I mean christ if a police officer can get away with mistakenly killing an innocent citizen I think it should be acceptable to have patent practitioners immune from violating the Copyright Act under a similar theory.

  50. “Stop taking our stuff.”

    I presume you are either one of the applicants from whom we will be taking fees to pay the “journal subscription” or one of the journaltards. If the former, you are a tard, but if you want to pay higher fees then I suppose that is fine with me. If the later you are also a tard, but the government “taking” your subscriptions is hardly any electronic skin off of your back and it is going to a solely government function so stop your whining.

    “The only legitimate use of government is the protection of rights”

    Sooo… in the execution of doing so you don’t believe that we should “take your rights” i.e. a subscription without paying?

    Frankly, making a second “Great Library of Alexandria” might not be a bad thing.

    Imagine one of these in our humble Alexandria:

    link to en.wikipedia.org

  51. 6: “However the dissent is saying that it is “too broad” in terms of what subject matter is being included, so much so that that the claims tread upon judicially excepted subject matter.”

    And what judicially excepted subject matter do the claims “tread” on? And what, if any canon of patent law does it violate? Oh and please provide proper citations.

    :: Usual Silence::

  52. Ned: “Malcolm without as few txxxbxxers and 6 without a few ‘tards, just would not be the same.So enjoy their banter. It is fun”

    No, Ned, it’s disrespectful.

    It’s disrespectful to the Actual Inventors that make this entire (patent) system possible.

    It’s disrespectful to the highly educated and dedicated patent professionals that serve the Actual Inventors.

    Most important it is disrespectful to the law.

    The law, and indeed the patent system is not a game for your online amusement. Actual Inventors may toil for years to bring their ideas, ideals, and dreams to the patent system.

    We depend on the law, and the legal professionals that work “within” it’s rules to support our work and bring our ideas to reality.

    Ideas that when reduced to practice, and afforded the protections and rights guaranteed under our Constitution, employ people, and feed an economy that sustains a nation.

    People like you Ned Heller, that attempt to subvert the patent laws do a grave disservice to your country.

    People like you Ned Heller, that show utter contempt for the existing rule of law, and pay homage to the jocular, juvenile antics of commenters like MM and 6, that seek to conflate, twist, and obfuscate the law at every moment, harm our great society and the it’s capitalistic dreams and possibilities.

    You sir have no honor, and no excuse.

    And if you w’ere in my presence I must say, I would remove my noble glove of inventorship, and smite you in the face with it.

  53. 6: “Yeah overall the dissent doesn’t explain itself very well, tards (like In-house) will be apt to misunderstand why he is saying what he is saying.

    Ned: “6, great post.”

    AI: I rest my case.

  54. All of Ned’s 101 theories, indeed the entire anti patent crowds argument is based on weak dissents, usually from a lone judge, if that!

    They can’t base any position they argue for on any majority ruling, statute, or Constitutional clause.

    My standard offer still applies to Ned, or any anti patent commenter. Join me in a debate on a any 101 issue purely relying on case law with proper citations, the statute, and the Constitution. Under real names or fake ones does not matter to me.

    Just bring your citations and let the patent community judge the outcome based purely on the merits.

    I promise, I will wipe the floor with you, as usual.

    As usual.

  55. Yeah, just like I thought–no proof at all.

    It’s a copy of an official agency record.

    It’s irrelevant that it may be for the benefit of the party who occasioned that record.

    It’s not under an actual or a constructive secrecy order or obligation of confidentiality that excludes the party specifically affected by the proceedings.

    And even if it were, that issue would be moot, as said party would have knowledge of the contents, as it was they who initially provided it to the PTO.

    Copying a government record for the protection of the primary party to which said record pertains is fair use.

    Tell me where I’m wrong.

  56. Or the gov could simply mandate that the PTO gets access fo free.

    Stop taking our stuff. Less government, and less intrusive government should be the hallmark. The servant is not the master. Making things easy for the servant is not a valid path. The only legitimate use of government is the protection of rights, not he taking of those rights for its own use.

    The Fourth Branch has taken over and is accountable to no one – except the pocketbook of the transnational Big-Corp.

  57. If one cares to throw legal terms around, the sister thread to this one at:

    link to patentlyo.com

    has some solid posts to consider.

    Specifically, IANYL TINLA has a post that explicates one question against the four factors.

    See the post at January 26, 10:43 AM. Such thoughtful posts should be liberally encouraged.

    Also, not to resurrect any misdirection, indeed to quash such, may I humbly suggest my own post at January 29, 10:43 AM which reflects and amplifies the post of Leopold Bloom’s January 26, 10:59 AM entry.

    As for people “wanting proof” and screaming “case closed,” try to remember that you are on a blog discussing general legal issues and you do not necessarily have a full or even a limiting single set of case facts under consideration. It should be no surprise that the discussions will focus more on opinions. Granted, the opinions should be based in proper legal thinking and avoid the legal mishmash of “What-Ev,” but antagonizing those that post because of the apparent want of a complete case is uncalled for.

    Moving forward, a welcome discussion would be an rebutting analysis of IANYL TINLA view, or a parallel analysis on the subsequent copying by the Office for the benefit of public persons that appears not to be related at all to the initial reason for the government’s copy (the public has no role in the government’s examination, which is the legal basis for the government’s Fair Use).

  58. Yes, that does seem quite clear. Depending on the purpose, the actions (and there are more than one set of actions) may have different levels of the protection of Fair Use.

  59. How about doing away with the requirement to submit copies. You still must cite the reference, but if the examiner cares to look at it the PTO can go check it out from the Library of Congress.

  60. Don’t shoot the messenger!
    When I was an examiner at USPTO, we routinely made 3 more copies of all submitted NPL to send out to other authorities, I think the authority may be in MPEP 11.1 Number of Copies – Appendix T Patent Cooperation Treaty or 21.1 Responsibility of the Receiving Office – Appendix T Patent Cooperation Treaty?

  61. or people copying a file wrapper, a copy when needed.

    But that’s an issue, isn’t it? How is that action related to the legal need of the government‘s examination?

    If other people want a copy, why cannot they obtain one the established way, controlled by the holder of the copyright material?

  62. Anne, good idea. The government could bargain for the right for applicants to submit a copy and for it to send the applicants, or people copying a file wrapper, a copy when needed.

    We should also think about reexaminations where the PO has to send copies to the one or more requestors as well.

  63. “Also, the PTO would be in a better position than individual law firms to negotiate some kind of bulk rate license that includes all the copies that need to be made.”

    Or the gov could simply mandate that the PTO gets access fo free.

  64. Care to offer any proof of that? I didn’t think so.

    Feel like throwing around some legal terms there Da Vinci?

    Do you even know what the traditional four factors are?

  65. “Application of the traditional four factors will likely not result in favor of the government.”

    Is that right, Nostradamus?

    Care to offer any proof of that? I didn’t think so.

  66. The idea that the PTO should have its own library and submission of a bibliography should be sufficient appeals to me. It would save work for applicants. Also, the PTO would be in a better position than individual law firms to negotiate some kind of bulk rate license that includes all the copies that need to be made.

  67. IANAE,

    How can the government contend that it has a right to make a copy of a reference and send it to the applicant in making a rejection, but that the applicant has no right to submit a reference to the government as part of an IDS?

    The government’s position is essentially the same position as that taken by the sued law firms.

  68. 1) How does the plaintiff know the defendants have a file copy? Mere speculation. I’m no litigator, but can’t the defendant simply use atty-client privilege when the plaintiff asks for the file copy? This case is going nowhere.

    2) Why don’t we just get rid of the duty of candor like the EPO did. Doing such would speed up prosecution. Just get rid of the presumption of validity. Or, keep the presumption of validity for those patents where the applicant submitted prior art?

  69. Good thing the USPTO is raising its fees so you can spend more time reading patentlyo at applicants’ expense.

  70. On further thought, this appears to be an elegant solution, and one that does not require a legislative response.

    Let the court make the logical connection that any party pursuing their rights under copyright law must have complied with Section 407.

    As long as the government‘s use then, falls to examination, the government then can go and get a copy from the Copyright Office for the government to use in its role of examination.

    All other uses, e.g., making copies for the public in a file wrapper, fail to serve the purpose of examination, and that’s where the line can be drawn to protect actual fair use (the use by the governement to do its job of examination) and the rights of the copyright holder.

    These neatly avoids the identified bug and does not require any additional legislation.

  71. You can copy out of a file wrapper at the PTO.

    That’s a bug, not a feature.

    It’s precisely that type of behavior, unconnected to any expressed legal requirement of examination purposes (for which a request may be legitimate), that places the government action in the crosshairs of a possible infringement suit.

    Application of the traditional four factors will likely not result in favor of the government.

  72. That’s a solution, but it does go a little bit further than the instant case.

    So does “banning paid for subscription journal services

    I think that was the point.

  73. Section 407 of the Copyright Act requires deposit of two copies of the best edition of a copyrighted work within three months of publication for the Library of Congress.

    Easily the most neglected IP law. Probably one of the most neglected laws of any type, quite possibly passing up speeding and jay-walking.

  74. This seems like a problem that requires a legislative response. Among the possible options I see are amending the Copyright Act to explicitly state that this is a Fair Use. Another possible solution would be to recognize that like issued patents, the Copyright Office already has copies of these articles as part of the copyright registration process. Those copies are submitted as required deposit materials. Even when works are not registered, Section 407 of the Copyright Act requires deposit of two copies of the best edition of a copyrighted work within three months of publication for the Library of Congress. It seems to me that permitting the USPTO to access and copy these works for the purpose of examination of patent applications is the easiest solution.

  75. And altering something that is Government Issued… hmmmm let me turn on my Abstract Vacuum……..Is that Counterfeiting? Sort of like the Stamped Pkg. only much worse.

  76. Yah like the folded in half one, the one that that Law firm had faxed me. The one in the File. The one that was copied badly I might add.

  77. “EFS-Web and EFS-Web Contingency are unavailable.”

    Nice when you can’t even file with the backup system. Not like I have to get an application filed in the next hour, but I sort of wanted to get a couple of issue fees paid to end the week. How many times has the Office redesigned the home page, yet they can’t keep the electronic filing system up 24/7. It’s kind of embarassing how often PAIR fails, or is painfully slow.

  78. Wasn’t Texaco about unauthorized copying while the gist of the arguments here have been what is, and what is not authorized under an agreed contract?

  79. I’m not quite sure how slam dunk the case for fair use is here. American Geophysical Union v. Texaco, Inc., 37 F.3d 881 (2nd Cir. 1994) is fairly close to the situation here.

  80. Facts are determined throughout the course of a trial by the trier of fact. Attorneys advocate for those determinations that favor their client.

    If you were an attorney, you would know this.

  81. are axxholes who deserve to be “ripped off”.

    Because MM decries that anyone he feels is an axxhole deserves to have less protection of the laws.

    That is some mighty fine “pith” there. Ranks right up there with the legal insight of Vacuum.

    When people see this kind of swagger, a sobriety test is in order.

  82. “Meh, why bother? Just get rid of all intelelctual property rights off the get-go and eliminate all of these concerns. ”

    That’s a solution, but it does go a little bit further than the instant case.

  83. I have not reviewed the lawls and rules on this issue since my last skim through the MPEP. If you know off hand then sure it is totally srs.

  84. I’m pretty sure the legal issue is not the ability to “get documents without agreeing to contracts”, but rather it is what did you agree to in a contract that rules.

    There are lots of ways to get copyrighted material withour any contract. Several of these are even thought to be criminal, but hey, Perry Mason, just go on waltzing into court and procalim the facts to be as you want them to be and TELL the judge that you win. We’ll see you in five years or so for each of your “wins.”

  85. Wow, what legal grist! Watch out Perry Mason.

    Your honor, I SAY the facts are so, thus I win.

    Tell me, “Tell me” have you ever seen, read, signed, or dealt with contracts dealing with copyright of technical information from the likes of which this case is grounded upon?

    You seem to like to operate in a vacuum. Like nature, the reaction of the legal community will be similar to such facile musings.

  86. Nice, but the discussion is not about the creation of any new rights, but rather the contracting away of existing rights. There is no sate ban or new right for the copyright holder. This is about the barter between a legitimate right holder (the holder of the defense of fair use) and another legitimate right holder (the copyright holder) making a business deal. “ I nonetheless agree with the majority opinion that a state can permit parties to contract away a fair use defense or to agree not to engage in uses of copyrighted material that are permitted by the copyright law, if the contract is freely negotiated” As for Dyk’s continued rantings, it is well known that his aversion to any type of intellectual property colors his views (to Dyk, freely negotiated basically means no right for the seller to say “No Deal”).

    This is not a tough thing to reason through.

    Although I will say that the reasoning at II is a pretty convincing argument for patent protection of software.

  87. where the courts have disagreed with you in the patent context

    And how was your night’s sleep? Room service adequate for you?

  88. by banning paid for subscription journal services

    Meh, why bother? Just get rid of all intelelctual property rights off the get-go and eliminate all of these concerns. Next, take private property rights away and eliminate those concerns. Then, have everyone employeed by the government and remove unemployment as a concern. Then make sure that no one is ever denied anything they want because they don’t have the money and then, finally we have reached Nirvana.

    But whatever you do, make sure that you do not wake up before you reach Nirvana.

  89. Otherwise why does the office even do it?

    That’s not a serious question, is it?

  90. Ned:

    You are correct, but I believe that’s only because the Federal Government has waived its sovereign immunity. See 28 U.S.C. § 1498. However, this waiver is limited. Claimants still can’t get enhanced damages or an injunction, I believe. Henc my statement that Congress should revoke this as to the PTO.

    On the other hand, states have sovereign immunity under the 11th Amendment, and I believe many have not waived it (which if I recall, some state universities such as UCLA take great advantage of). See Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 119 S. Ct. 2199 (1999).

    I don’t have time to re-read that case, but I believe if states start nilly willing violating intellectual property, Congress might be able to revoke the immunity under Section 5 of the 14th Amendment. They just couldn’t do it yet in that case because there was no history of infringement.

    Here’s some speculation on getting around state sovereign immunity, but I’m not sure if it’s ever been tested in the courts. link to www2.law.ucla.edu.

  91. Freedom to Contract —

    I’m never a fan of these PatentlyO disputes based on nothing but pure opinion, so I did a little research. Looks like there is some case law for your view, but not settled. See Dyk’s dissent in Bowers v. Baystate (Fed. Cir. 2003). It has a pretty interesting discussion. link to ll.georgetown.edu

  92. I can think of other examples where the courts have disagreed with you in the patent context, such as agreements not to challenge the validity of a patent.

  93. Freedom To Contract:

    As others have said but you seem to ignore, you can get many of these documents without agreeing to contracts with the publisher. You can copy out of a file wrapper at the PTO. Also, there seem to be a lot of PDFs available through Google Scholar that have ACM and other copyright notices on the bottom (which aren’t free if you go to the publisher’s website).

    Of course, I’m guessing there is a contract as you say when you go to IEEE, ACM, ACS, etc.

  94. The Sony analysis is hardly a shoe-in. See the texaco case (2d cir) from the eighties, where texaco was successfully sued for making internal copies of articles for research purposes and there was a licensing mechanism in place. (The supreme court has also cited that decision a few times as well).

    No such licensing mechanism existed in Sony. These analyses are fact-dependent and there’s just not enough to know for sure.

  95. “Actually, 6, the more I think about this, the more I like it. Imagine if every IDS had hyperlinks to publish documents.”

    Ned of course I like the idea of hyperlinks (of course they need to be pretty permanent hyperlinks tho and that’s another problem). But there is several problems with it. Many NPL sources, even journals, do not have electronic copies avail. And especially old journals or current journals with old articles don’t have electronic copies.

    “Ditto any member of the public downloading the IDS. They could simply click through the links to see the references. If a particular reference was to a subscription service, I suspect the link would require a login to provide access. But firms could buy rights to scientific publications in bulk, making logins automatic. There are organizations that offer bulk licenses on terms.

    Only if a reference were not available online should a copy be required. But, in this age, that is becoming rarer and rarer.”

    Or the gov. could just get off it’s arsehole and do something for the good of the country by banning paid for subscription journal services thus speeding the way to what we will have in the future anyway. Copytards are fighting a losing battle Nedo. By the time I’m your age I doubt if we’ll even have anything resembling “copyright” of today left. Perchance some semblance of the patent system will remain. All the decisionmakers with any sense are ready to scrap the whole copyright thing and start over. And the number of those deicisonmakers will only increase as kids that grew up with the net grow older. We’re in your lawlschools soon to be subvertin’ your lawls from the inside.

  96. “What do you think a win for the copyright holder will do?”

    Hopefully it will pit lawlyer business model against lawlyer business model. Wootles! But what I actually think will happen is that patent law firms will simply pay a little more for their subs or their papers and pass the cost on to patent applicants. It’s a tax on innovation! And oh noes! My Skies! They’re falling!

    “Do you not think that this would embolden the winner to go after other “dastardly pirate peoplez” which includes the PTO and its systems regardless of the Office Memo?”

    I think the PTO will just say: “Come at me broz.” Cause I know that is what I’d say.

    “That’s copyright infringement (for a non-sanctioned purpose) with hints of distribution right violations. ”

    I’m pretty sure that the PTO making copies is totally sanctioned as a duty the governement fulfills in its official capacity.

    “Keep in mind the official and thus only legal right of the Office in requesting the copy in the first place is in the determination of granting a right. ”

    Says you, but I doubt that’s what the lawl says.

    “That determination does not involve the public viewing the supporting materials.”

    I doubt very much that the PTO makes copies FOR GIGGLES. I’d say that it is very much one of its functions provided for somewhere in the lawls or rules. Otherwise why does the office even do it?

    Besides, I can only hope that the copyright folks do come after the PTO and WIN. And I’ll tell you why, the PTO will make a powerful ally in the fight against copytards and they’re currently not on the right side of that fight, mostly because its old people that are in charge. Dagnabbed old people. Something like this happening may help to open their earballs.

  97. Unless of course, the philosophy of those using such swagger and charm does not align, then its a GD WAR.

    Hypocrite.

  98. Yeah overall the dissent doesn’t explain itself very well, tards (like In-house) will be apt to misunderstand why he is saying what he is saying. For instance, the tards will think that they are saying that the claim is “too broad” ivo prior art, but that is not what they are saying at all. However the dissent is saying that it is “too broad” in terms of what subject matter is being included, so much so that that the claims tread upon judicially excepted subject matter. But even though tards will continue to be confused the dissent does do a fairly decent job of laying out one theory for why the courts have held the way they have. Still that is a theory, nothing more. The underlying holdings are what are important.

    I do particularly like his claim dissection that he does in his footnote. And I like how he applies it, but I’m not really sure if that is in accordance with the law, save perhaps for being a round about way of stating what Flook said.

    I certainly like:

    “Many software and business method patents simply describe a basic, well-known concept that has been im-plemented or applied using conventional computer tech-nology. These “inventions” rely on functions—such as storing data, and organizing, outputting, and displaying information—that any general purpose computer rou-tinely performs. While running a particular process on a computer undeniably improves efficiency and accuracy, cloaking an otherwise abstract idea in the guise of a computer-implemented claim is insufficient to bring it within section 101.3″

    But in the end, I’m not 100% sure that Mayer is 100% on the proper 101 boat. Even so, he is at least 95% of the way there and I like the way he would do things. And I also like that he is apparently one of the only CAFC judges that can read the Bilski decision.

  99. Giving your copy to the PTO is a naked transfer.

    Case closed.

    Nice. Except that’s not the facts of the case.

    If it were, then the discussion would not only be booring, but moot.

    As it is, there is more than mere “giving” going on.

    Such facile characterizations quite miss the point.

  100. Actually, 6, the more I think about this, the more I like it. Imagine if every IDS had hyperlinks to publish documents. The PTO might intercept those links to redirect traffic its internal DBs, but it would make it very easy for you to review IDSs.

    Ditto any member of the public downloading the IDS. They could simply click through the links to see the references. If a particular reference was to a subscription service, I suspect the link would require a login to provide access. But firms could buy rights to scientific publications in bulk, making logins automatic. There are organizations that offer bulk licenses on terms.

    Only if a reference were not available online should a copy be required. But, in this age, that is becoming rarer and rarer.

  101. Well Obama can be happy about Rush. There is probably not a woman on the Planet accept for a few congresswoman that more than likely (if the vote will) also vote Democrat.Rush you are like a Nuclear Bomb. IRAN WANTS YOU!

  102. “In the instant case” is the key, and only goes as far as that goes (which is not very far).

    What do you think a win for the copyright holder will do?

    Do you not think that this would embolden the winner to go after other “dastardly pirate peoplez” which includes the PTO and its systems regardless of the Office Memo?

    The Office charges how much for blanket photocopies of file wrappers including these types of protected works?

    That’s copyright infringement (for a non-sanctioned purpose) with hints of distribution right violations.

    Keep in mind the official and thus only legal right of the Office in requesting the copy in the first place is in the determination of granting a right.

    That determination does not involve the public viewing the supporting materials.

    The Office making public copies of anything outside of the patent application itself goes beyond that legally recognizable purpose. This discussion is conveniently absent from the Government’s self-serving memo.

  103. Come Back, true, he hasn’t said this in so many words, but I have been watching what he is saying to detect a pattern. I think Mayer’s dissent lines of very well with Malcolm’s consistently expressed views.

    I might be a tad bit generous here, but I think Mayer and others have been reading Malcolm’s posts and are being persuaded.

    Regarding Malcolm’s and 6’s use of derogatory terms, they use them with me as well. I don’t take offense. Think of the way Marines talk to each other. They swear and use derogatory terms all the time. It is just part of their swagger and charm.

    Malcolm without as few txxxbxxers and 6 without a few ‘tards, just would not be the same.

    So enjoy their banter. It is fun.

  104. it is the pith and essence of what Malcolm has been arguing about here for years

    You are far too generous in your attributions.

    Malcolm has been arguing for a WHATEVER for years and has done so without any cognizable legal structure. Your labeling this as “pith and essence” is about as funny as your past labeling of 6’s offensiveness as “charm and swagger.”

  105. In House, but he is arguing that what the PO is trying to do is patent concepts that are in the public domain, as per Bilski, by reciting a computer implementation.  While this all sounds in obviousness, it is the pith and essence of what Malcolm has been arguing about here for years and essentially what was wrong with the claims i Bilski.

  106. Well my problem with my switched copyrights was not what I was referring to in my post. But I did stay at a Holiday Inn last night, and that must be the reason they erased my last one.

  107. Sarah, you may have me confused with those who are arguing that they have fair use rights to make a copy of a reference and either keep the original and send the copy to the PTO, or to send the original to the PTO and keep the copy.

    I think that this is copyright infringement and it is not authorized by any legal requirements to set copies of references to the PTO.

  108. “How about blanket civil immunity for all actions taken in good faith in furtherance of the prosecution of a patent application?

    Can you imagine how awesome that would be? All you’d have to do to infringe on copyright all year long with no problemo is submit one application, cite all the new releases as references and bam, you’re in the clear.

  109. “Businesses that need to sue their customers to stay in business are the shxttiest businesses in the world, by definition.”

    As opposed to businesses that need to sue their competition.

  110. “Again, I would caution copyright owners like these plaintiffs to be careful of what you ask for. ”

    Perhaps what they want is, in reality, congress to smack down the rightsholders.

  111. Why Ned? We already get full resolution digital images in EDAN.

    The only issue in the instant case involves dastardly pirate lawlfirm peoplez not the PTO or its systems.

  112. Ned,
    If you charge your client for citing patents that you were supposed to pay for at the USPTO, then why would it be any different to pay the copyright office for their Copies. How much do lawyers make and your crying over a copy that you should pay for. How else is the copyright office supposed to make the extra monies it needs when the costs of Ink and Trees continues to grow? Gheeesssh.

  113. The government is the problem here and it needs to get its act together and intervene, or stop requiring copyright infringement to compy with its disclosure rules.

    I don’t see why the government needs to intervene. Sure, it would be nice to have a sui generis exception, but there’s nothing inherently unreasonable about the government expecting each applicant to sort out its own civil liability issues before applying for a government grant.

    How far would this exception go, exactly? Immunity from all copyright liability in all patent prosecution matters? Only for IDS references that are actually but-for material to the issued claims? To the currently pending claims? How about blanket civil immunity for all actions taken in good faith in furtherance of the prosecution of a patent application?

  114. Malcolm, it appears that you have convinced Mayer on your 101 theories. He should have cited you.

    Bravo! and well done there.

    Check my post at 01:25 pm.

  115. Dennis, this clearly is a case where the government needs to intervene. It’s policy of requiring copies instead of alternatives such as merely citing a copyright work and which would require the government to pay for its own copy is the problem here.

    The government is the problem here and it needs to get its act together and intervene, or stop requiring copyright infringement to compy with its disclosure rules.

  116. Unfortunately, “Tell me’s” characterization, while appealing, is not complete for the reasons listed.

  117. Translation: any law that gives a right to sue one’s customers should be abolished.

    Secret translation: any law providing property rights should be abolished.

  118. Can one contract away one’s right to transfer unencumbered, under the first-sale doctrine?

    Although I’m no copyright expert, I find “Tell me”‘s characterization appealing.

  119. I wasn’t making any representations as to its content, I merely stated my belief that it was relevant.

    I’m not a copyright expert, this is one discussion I will be content to just poke at, but not offer anything very interesting, I’m afraid.

    BTW, I essentially agree with your understanding of that section.

  120. Businesses that need to sue their customers to stay in business are the shxttiest businesses in the world, by definition.

    John Wiley & Sons are axxholes who deserve to be “ripped off”.

  121. Thanks Inviting.

    That section, which pertains to the legally defined “libraries and archives”, of which applicants and lawyers are neither, does claw out an exception.

    But it is an exception that proves the rule.

    In more than one way.

    First, as mentioned, it applies to a specific subset of society.

    Second, as written, it affirms the ascendency of contractual obligations.

  122. which is made lawful by either the first-sale doctrine or under the PTO’s fair use theory.

    Actually neither.

    Re-read the PTO’s fair use theory again. It is geared to protecting the Office, not the supplier.

    Also, as an aside, the Office theory is flawed, but we can leave that discussion for another day (but here’s a hint: fair use under legal need will only cover the intent of the legal obligation).

    The first-sale doctrine may have an impact, but then again, it may not. Sure, a naked sale will thus have an impact. But that is not the typical fact pattern involved in these types of situations. Thus, as I have been pointing out, one must look at the contract signed and freely entered into in the first place in obtaining the copyrighted material.

  123. Copyright law doesn’t give copyright owners rights with regard to fair use

    No one is saying this.

    What is being said is that the one with the fair use rights (the one wanting to obtain the copyrighted material) has contracted those rights away in exchange for the copy of the copyrighted material.

    Since you have the actor incorrectly identified, your argument is flawed at the foundation, and your pinnacle of “copyright misuse” topples into the dust.

  124. Not if you’re copying an official agency record, you don’t.

    The only potentially relevant issue is the transfer of the work to the PTO, which is made lawful by either the first-sale doctrine or under the PTO’s fair use theory.

  125. Copyright law doesn’t give copyright owners rights with regard to fair use, and using the leverage of copyright status to acquire another party’s fair use rights is copyright misuse, just like patent misuse. It certainly does violate public policy.

  126. Tell me where I’m wrong and fish scales,

    That’s a great start, but by no means is that the finish.

    One must look at any contract terms willingly entered into when the parties first exchanged the copyright material with a copy of that material.

  127. then putting links

    This may not move you out of the danger zone, as this may call into the picture distribution and still copy issues (at the requester’s viewing apparatus).

  128. The USPTO does have subscriptions to major publishers, or at least to the IEEE library, apparently its most cited source of non-patent literature. They need them for searching, esp. in fields where there is a lot of non-patent prior art.

    The problem, most likely, is that the licenses are limited – likely that USPTO examiners can search and make copies, and that single copies can be sent accompanying office actions, but they aren’t made available for download in PAIR. Something like that. More license rights would likely result in higher license fees, which would, invariably end up in fee increases (esp. given the AIA).

    Keep in mind that the publishers also make money, indeed probably a lot more of it, from applicants and other interested parties than from the USPTO. Every time that you want to see what a citation says in some issued patent, etc., you have to pay to download it from the publisher. Well, unless your firm happens to save copies, JIC (and, merely saving them wouldn’t seem to infringe, and then putting links instead of actual copies in the case files would also lean against infringement).

    Let me add that there is a movement against academic publishers, but the money brought in to societies that publish often does go to good causes – for some, it may be comparable as a revenue stream to membership. So, yes, the money isn’t going to the academic, but, no, it isn’t really going into anyone’s pocket either. It just allows these societies to do more with lower membership fees.

  129. Sounds to me like that should violate public policy.

    Why? It’s their stuff. Do you think somehow you should have unfettered rights to anything someone else has?

  130. fish, does the law require one to notify the PTO of prior art it has access independent access to or just submit a copy?

    I mention the word law here for a reason. Rules are not the law.

    Fair use may turn on the answer.

  131. Do really think a court is going to say that “mandated” requirement by a federal agency to submit one copy of a journal article is not “fair use”?

    They might. After all, it’s only mandated by a federal agency because you’ve chosen to engage that particular federal agency in furtherance of your own business objectives. And because you happen to be aware of the copyright work while pursuing an application to which it is material. You’re essentially deciding to obligate yourself to infringe someone else’s copyright because you think there’s money in it for you.

    If you willingly signed a contract with another private party, and the terms of that contract required you to infringe a patent, could you claim your legal obligations under that contract as a defense to infringement? I rather doubt it.

  132. Wow, another blockbuster case on 101/102/103. Major policy dispute between Plager and Mayer. Newman sided with Plager that 282 is limited to 102/103/112 and 251, and that we should avoid 101 where possible. Mayer, sounding a lot like Malcom, hits back hard and said 102/103/112 has not worked as promised to stem the tide of low quality patents that take a well known concept and implement it on a computer.

    Read it now!

    /media/docs/2012/03/11-1149.pdf
    MYSPACE v. GRAPHON CORP

  133. “The PTO could simply require, as Dennis suggested, citations and perhaps hypelinks to publications.”

    I would be fine with that if they did, Ned, and I’m not against respecting “IP rights and the rights of authors.” Believe me, having to send the PTO a journal article(s) with an IDS submission, even if its a pdf file with an electronic submission is a “pain and a half.”

    But the PTO hasn’t done that, so we’re currently under a legal obligation to provide a copy or not have the reference considered. Do really think a court is going to say that “mandated” requirement by a federal agency to submit one copy of a journal article is not “fair use”? (And what about other filings court cases?) If a court rules that not to be “fair use,” the chaotic situation that would ensue would likely cause Congress to intervene, and what Congress does the copyright owners likely won’t like. Again, I would caution copyright owners like these plaintiffs to be careful of what you ask for.

  134. I don’t believe corporations are people. Perhaps that’s because I’ve taken a biology class … or graduated from kindergarten.

  135. If what the PTO does isn’t fair use, Congress should un-waive sovereign immunity as to it, and tell these publisher to P**s off.

  136. You buy one copy.

    You use it, then submit it to the PTO.

    You make a copy of the entirety of the submission, including the reference, the totality of which submission constitutes part of the official record before the PTO.

    There is no copyright in official records, and to the extent that there is, any copying of that record by one to whom it directly pertains, or by their duly appointed attorney or agent, is fair use of that record.

    Tell me where I’m wrong.

  137. Contract of adhesion?

    Is there case law on contracting away fair use rights? Sounds to me like that should violate public policy.

  138. Ran Raider: “Publishers are even charging authors access to their own articles!”

    I also have heard of this happening.

  139. “In that case, the court held that it was a fair use for home consumers to record television broadcasts so the consumers could view the shows at a later time.”

    A commonly held conception, but a mistaken one. There was no such holding in the Sony case. The court simply decided that the sale of the Betamax VTRs was not contributory infringement because the hardware had substantial non-infringing uses, and there was insubstantial evidence of nonminimal harm to the potential market for television programs.

    The opinion further insinuated, slyly, that if Congress were to tighten the Copyright Act to make everybody that taped programs at home scofflaws, the time-shifting American populace would probably throw the bums out of office, but that nevertheless if Congress chose to regulate copyrighted works this way, it could.

    There has never been a holding that says taping TV programs for private noncommercial use constitutes fair use under Section 107.

  140. EG, I disagree.

    The PTO could simply require, as Dennis suggested, citations and perhaps hypelinks to publications. The PTO could take out a subscriptin itself, and could bargain for the right to retain a file copy.

    Ditto firms. There are copyright licensing orgs. They could provide firms with licenses to suit their practice.

    We should respect IP rights and the rights of authors.

  141. A fair number of articles have titles, authors, dates and other publication information (normally referred to as a citation). Even more strange, some articles even have Digital Object Identifiers (DOIs) which can be “used to uniquely identify an object such as an electronic document.” (see Wikipedia). There is nothing stopping someone, or something (if you don’t believe corporations are people) from cataloging this information such that the article submitting public knows which articles the USPTO has access to. Furthermore, if the USPTO does not have access to an article identified by the citation information and/or DOI information, they can get access to it through a legitimate copyright license or legitimate article submission.

  142. “To the extent that the USPTO already has access to many of the publications in question here, a similar solution could work that allows patent practitioners to simply submit the citation to articles within the USPTO databases.”

    This made me chuckle. I see no way that this could actually happen.

  143. Unless the plaintiff(s) in these cases case show “abusive” copying of such journal articles that goes beyond legitimate IP law practice needs

    …or….

    they show a violation of contract terms…
    (is it “misuse” when the rights holder holds you to a contract term, freely signed, and you do something that you have contracted not to do?)

    Or perhaps the contracts were reviewed by the Stanford folks…

  144. Are we supposed to destroy the paper copy after scanning and e-filing?

    I don’t know. You might check the contract you agreed to when you first obtained the copyrighted material.

    Did you contract away certain of your “fair use” rights?

  145. With a decision that I wasn’t ready to settle for not my favorite school just yet :( Although, I just recently hit a certain no. of years here so I was like meh, I guess I gotta go ahead and do it. Then I was back to looking to planning for the whole “paying” for this nonsense. What a load of crp. Like it should cost 10-30x what it costs for a college education. Absolutely outrageous.

  146. Well, the “you know what” has finally hit the fan on copying journal articles for submission to the PTO. Unless the plaintiff(s) in these cases case show “abusive” copying of such journal articles that goes beyond legitimate IP law practice needs (e.g., submissions for IDSs), the copying here is protected “fair use,” and these suits have about a “snow balls chance” in “you know what” of succeeding (other than for the “scare factor”). Besides “fair use,” if I were the defendants in these cases, I would also assert copyright misuse.

  147. Are we supposed to destroy the paper copy after scanning and e-filing?

    Yes, please. And if you receive a copy by e-mail, kindly e-mail it back once you’re finished with it.

  148. There is a growing movement in academia against publishers. Publishers are even charging authors access to their own articles! University Libraries are now in a push to have faculty deposit copies of their articles with their own library online archival system and for faculty not to sign their copyright away to publishers! The bottom line, the current business model for online publications and access needs revision. Publishers mindsets are still in the 1980s paper copy world.

  149. Ok, so they don’t want us to make a file copy. What if we send a copy to the PTO and then access it in Private PAIR. Is that ok? Oh.. wait…. that copy that I sent to the PTO was just a scanned PDF of the paper copy… Are we supposed to destroy the paper copy after scanning and e-filing?

  150. > Lawlyers are powerful allies.

    A few years ago you mentioned something about going to law school, if I remember correctly. How is that progressing?

  151. “This enforcement project may push the sciences in that direction as well.”

    Or, it may well lead towards them trying to lock up their materials more so as to make some $$$. Which of course ordinarily is just what lawlyers want from the IP “systemlol”. But which seems to be downplayed in this particular instance where lawlyers are on the receiving end. Funny that.

  152. ” To the extent that the USPTO already has access to many of the publications in question here, a similar solution could work that allows patent practitioners to simply submit the citation to articles within the USPTO databases.”

    If you believe that I’ve got a bridge I’d like to sell you. Having examiners look up 100 pieces of NPL to take care of a single IDS is absurd. It would take all week. I don’t even know how they get all the NPL they have in some of the larger IDS’s.

    Punching in 500 patent no’s is nowhere near as time consuming as going to each individual journal and finding their specific article for even like 50 NPL.

  153. “Erchak, A., et al., “Enhanced coupling to vertical radiation using a twodimensional photonic crystal in a semiconductor light-emitting diode,” Applied Physics Letters, vol. 78, No. 5, pp. 563-565 (2001).”

    Sounds like a good read.

    I wish them luck against those dastardly pirates! Lol.

    No, really, I do, just so that we obtain a new ally in the fight against the copylolright nonsense we have on the books today. Lawlyers are powerful allies.

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