Court Says Copying Journal Articles To Show Prior Art In Patent Proceedings Is Fair Use | Techdirt

Use the link to access the document discussed in the following blog post: "Here's one that touches on both patents and copyrights. Last year, we wrote about how some academic journals were ridiculously claiming that law firms, who made copies of journal articles to submit to the US Patent and Trademark Office to show examples of prior art, were infringing on their copyrights. Yes, they were arguing that you couldn't use their journals as examples of prior art without paying them for the privilege. Thankfully, the USPTO stepped up and issued a memo explaining why they believed such usage was clearly protected as fair use. Still, the American Institute of Physics and Blackwell Publishing decided to sue a law firm, Winstead PC, and patent filers over the matter. The USPTO then stepped in as an 'intervening defendant.' Over the course of the case, the publishers finally admitted that articles submitted with patent filings themselves probably weren't infringing and dropped that claim. However, they still argued that other copies made 'during the process of evaluating and selecting' material to be submitted to the USPTO were infringing (in other words, the clients and the lawyers sharing copies of the articles back and forth -- and later copies of the articles associated with patent files). The USPTO stepped in and argued that this was obviously fair use, noting the benefits to the public, the fact that none of the copying was done for 'commercially exploiting' the work, that the copies are a part of a much larger process and, of course, that it doesn't compete with the primary market for the works. Oh yeah, also: 'courts routinely hold that copies made in connection with government proceedings is fair use.' The district court in the northern district of Texas ruled last week that the defendants are entitled to the fair use defense in a ruling from the bench. A full ruling explaining the reasoning will come out sometime soon, highlighting which of the USPTO's arguments were particularly convincing -- but, in the meantime, this is clearly good news for fair use, though it seems likely that the ruling will be appealed."