In the United States, any individual who is associated with the filing and prosecution of a patent application is under an ongoing duty of obligation while the application is pending, to disclose all information, which is pertinent to the examination of the application to the United States Patent & Trade Mark Office (USPTO). Individuals who are under this strict duty of disclosure include the inventors of the invention described in the patent application, the owner of the patent application (i.e. also known as the assignee), and also the patent attorneys acting on behalf of the inventors and/or assignee.

All of these individuals are obliged to submit details of the relevant “prior art” of which they are aware to the USPTO in a so-called Information Disclosure Statement (IDS). Prior art can include patents, patent applications and any academic, technical publications, which describe subject matter that is similar to the invention that is claimed in the US patent application. While it is not necessary to supply the USPTO with actual copies of relevant patent documents (just the number will suffice), one must submit physical copies of relevant non-patent documents, such as journal articles. Failure to make a full disclosure to the USPTO, in the IDS, can seriously compromise the patentee’s ability to enforce any resultant US patent that might issue from the patent application. In addition, if it can later be shown, for example by a competitor, that there was an intentional failure to provide any relevant information to the USPTO while the patent application is being examined, then it may be possible to invalidate any subsequently issued US patent, and such willful behaviour could even result in an action for damages against the patentee.

Copyright infringement

Two copyright infringement suits have just been filed against two firms of US patent attorneys. In particular, the plaintiffs (Hoboken publishing company, i.e. John Wiley, and the American Institute of Physics) are pursuing copyright infringement charges against the patent attorneys who, as part of the duty of disclosure, sent copies of journal articles to the USPTO when submitting their IDS, and also kept corresponding copies of these articles in their in-house files.

Earlier this year, the USPTO declared that copying and submitting copyrighted documents, for example academic papers, in an IDS, should be considered as a “non-actionable fair use”, and did not amount to copyright infringement. Indeed, many US patent attorneys pay for access to journals and published articles, and the USPTO also has its own access to such articles. The issue in question in these two cases however is whether the patent applicants must pay an additional fee for the extra copy of the article mentioned in the IDS that was kept in their attorney’s in-house file.

The managing partner of one of the law firms being sued released a statement in which he referred to the position adopted recently by the USPTO that copying articles from academic journals should be considered as being a non-actionable fair use. He went on to say that it would be easy to obtain an opinion that making in-house copies of copyrighted works also amounts to fair use. One of the plaintiff’s lawyers has admitted that the copies of the articles submitted in an IDS to the USPTO does not amount to copyright infringement. He said that “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…..”.

Conclusion

It remains to be seen how the Courts will decide on the issue surrounding copyright subsisting in copies of journal articles made by patent attorneys for their in-house file. If the Courts find that making and keeping an in-house file copy of an article does constitute copyright infringement, then US patent attorneys will be left with two choices. One option would be for them to not make an extra copy for their file. However, this could make it difficult if/when the attorney needs to refer to that article when advising their client, for example when responding to an office action or examination report. The other option would be for the attorney to simply pay an additional fee to the copyright owner for making the file copy, but then this would surely result in a cost increase to patent applicants. At a time when filing and prosecuting US patent applications is already substantial, it would be a shame if applicants were also required to pay yet another fee for meeting the duty to disclose requirement.

It is also worth nothing that many law firms are moving to a “paperless environment”, in which physical files are being replaced by electronic files. In the event that the Courts do find that a copy of a journal kept in a patent attorney’s file does amount to copyright infringement, it is likely to be irrelevant if that file were physical or electronic, as the original journal would still have been copied.