Using Copyrighted Articles in Patent Prosecution Is A Fair Use.

In a battle of intellectual property lawyers, U.S. Magistrate Judge Jeffrey Keyes recently sided with the patent attorneys. He ruled that a law firm’s use of copyrighted scientific journal articles in prosecuting patent applications constituted fair use.

American Institute of Physics v. Schwegman Lundberg & Woessner involved science and technology articles published by Plaintiffs American Institute of Physics and John Wiley & Sons, Inc. The law firm of Schwegman Lundberg & Woessner (Schwegman) obtained and later copied eighteen of the Plaintiffs’ copyrighted journal articles for use in its patent prosecution practice. The Plaintiffs allege that by obtaining the copies without paying for a license, and by making internal copies within the law office, Schwegman committed copyright infringement. The Plaintiff agreed submitting copies to the Patent Office was permissible. Both Schwegman and the USPTO maintain that Schwegman’s copying of the articles for their files and review constitutes a non-infringing “fair use.”  The publishers disagreed.

In holding that fair use applied, the court applied the fair use provisions of the copyright statute which requires the courts to consider the following factors in deciding this issue:

  • The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  • The nature of the copyrighted work;
  • The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  • The effect of the use upon the potential market for or value of the copyrighted work.

In this case, the court determined that all four fair use factors weighed in favor of finding that Schwegman’s use is fair as a matter of law. As explained by Magistrate Keyes:

The record demonstrates no genuine dispute that Schwegman’s use of the Articles was new and different and did not merely supersede the original purpose of the Articles. Also, the undisputed facts demonstrate that the nature of the Articles is predominantly informational. Further, although Schwegman did make complete copies of the Articles in its patent prosecution practice, the only reasonable inference to draw from the record is that Schwegman’s copying of the Articles was consistent with the new and different purpose and character of Schwegman’s use. And there is no evidence to suggest that Schwegman’s copying impacted a traditional, reasonable, or likely to be developed market for the Articles.

The decision is good news for fair use advocates and patent lawyers, but it must still be affirmed by the district court.

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– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +