The United States Patent and Trademark Office (USPTO) has declared that copyrighted materials are crucial to the Patent System and should not be threatened as copyright infringement. These remarks come in at an opportune time as the USPTO sought to intervene in a copyright infringement suit against Defendant McDonnell Boehnen Hubert & Berghoff LLP, whose patent prosecution attorneys have been sued by Plaintiff Publishers for using their copyrighted material in  patent applications.

“If this court grants the plaintiffs the relief they request — which would be a finding that the defendant patent prosecutors violated copyright law by copying certain materials and distributing them to the USPTO even though Patent Act regulations require this submittal — the result would likely cause significant delays in patent prosecution and significant negative impacts on the efficiency, quality and cost effectiveness of the patent process,” the Patent Office remarked.

As such, the copyright infringement suit was filed by Plaintiffs, John Wiley & Sons Ltd. and American Institute of Physics accusing the Defendant for violating the publishers’ copyrights by including copyrighted content from their journals into patent applications filed to the USPTO. Clearly, the Plaintiffs are seeking to create unprecedented liability for law firms filing patent applications that would change long-established practices.  However, it is to be noted that this liability comes at a heavy price, since it would undermine the Patent Office’s ability to get full disclosure of relevant prior art, which would be devastating for the Patent System as we know it.

Accordingly, “When a patent attorney, in the course of representing a patent applicant, submits a copy or copies of a ‘printed publication’ … or a publication in the ‘prior art’ … the patent attorney is doing so because of the requirements of the United States Code, the United States Code of Federal Regulations and his or her oath of office as a member of the bar of the USPTO,” the Patent Office said.

However, the case has now been resolved. The Federal judge hearing the case concluded that submitting articles to USPTO and making limited copies of them for those purposes was a fair use of the copyrighted works.

As such, other cases filed by the Plaintiffs related to this subject matter in other federal courts have also been dismissed.  Accordingly, the two parties in this case have settled as far as attorneys’ fees and costs at an undisclosed amount.