Is It OK to Make a Copy of a Work to Submit to the Patent Office to Satisfy a Patent Applicant’s Duty of Disclosure?

By Victor A. Cardona

A copyright owner has the right to prevent others from making copies of his work. In certain situations one may make copies without the copyright owner’s permission. There are various situations in which such a “Fair Use” applies including in an educational context.

The Patent Office requires that a patent applicant submit relevant prior art (e.g., patents, technical articles, technical journals, etc.) to the Patent Office to help the Office perform its examination of patent applications. Does this requirement conflict with a copyright owner’s right to control reproduction of a copyrighted work?

17 U.S.C. §107 provides a fair use exception for a copyrighted work. Four factors are considered when deciding if a fair use exception exists: “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. §107. In 2012, the United States Patent & Trademark Office (USPTO) discussed fair use with regards to non-patent literature (NPL) in the patent examination process in a memo to the patent community. Through the memo, the USPTO addressed fair use issues such as making copies of copyrighted NPL and providing it to an applicant during patent examination and making a copy of a copyrighted NPL and submitting it to the USPTO.

The brief conclusion was that the USPTO currently has licenses for much of its NPL and such licenses permit it to make copies of the NPL used in examinations. When the USPTO makes copies of unlicensed NPL for use in the examination process, it considers this copying to be protected by the fair use doctrine. As indicated above, Patent applicants or their attorneys also make copies of copyrighted NPL to submit to the USPTO. The USPTO also considers this to be protected by the doctrine of fair use. The USPTO did not take a position on whether making additional copies of such NPL during prosecution for clients, other attorneys, or inventors qualify as fair use. However, the USPTO’s stance on fair use has not stopped publishers from suing firms for copyright infringement.

This decision in 2013 of (see Am. Inst. of Physics v. Schwegman, Lundberg & Woessner, P.A., 2013 WL 4666330 (D. Minn. Aug. 30, 2013)) finding fair use, should put patent applicants and their attorneys a little more at ease when submitting documents to the Patent Office. Absent this decision, applicants could feel as if caught between a rock and a hard place – obligated by the Patent Office to make prior art submissions -but feeling a risk of copyright infringement.