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January 26, 2012

USPTO and Prior Art

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Posted by Alan Wexelblat

Tim O'Reilly pointed to this PDF from the US Patent and Trademark Office regarding Fair Use.

It seems that various scientific and technical publishers are raising objections to the USPTO using their publications for prior-art searching. The PDF lays out the Office's position and policies around fair use. It's actually somewhat complicated but the document does a good job of describing things: In some cases, the Office has subscriptions and other forms of paid access. In others it's making use of public sources, or submissions by applicants. In some cases, the Office is providing copies of this material to applicants as part of office actions such as patent rejections or re-examinations, both of which may rely heavily on prior art such as scientific/technical publication.

The Office claims, I think with good justification, that even in cases where it is providing personal copies of non-licensed literature to applicants it is doing so under a protective umbrella of Fair Use. The PDF lays out the Fair Use justification for these practices and notes other steps the Office has taken to protect copyrights, such as not placing non-licensed material online where it could be arbitrarily copied.

Finally, the Office claims (again, I think with good reason) that it requires applicants to be responsible for copyright protection of materials that they submit to the Office and if applicants make copies or distribute materials that the Office supplied them as part of an action, then it's the applicants who bear the responsibility for this (possibly illegal) copying.

What I can't figure out is why this is an issue in the first place? Isn't one of the biggest problems we have with patents today the craptastic lack of prior art on submissions? Isn't it in everyone's best interest to use the available sci/tech literature to make the best possible prior art decisions? If there was some kind of print-on-demand feature for all sci/tech literature inside the Office I could understand the concern, but who exactly is up in arms over what seems to me to be perfectly normal uses of publications?

Or is it just that Fair Use has gotten so badly thrashed in the past couple decades that people sort of conveniently forget it even exists in statute?

Comments (1) + TrackBacks (0) | Category: IP Abuse


1. Matt on January 26, 2012 3:52 PM writes...

Well, sure but...

From the publications' point of view, this is unauthorized use of their works. The PTO should buy a copy if it wants to read a copy, and buy another copy if it wants to give a copy to the applicant, and buy a license to publish if it wants to publish.

As far as the fair use justification - not under the Act. This use of the publications is a huge potential part of their market, and the PTO's unlicensed use of the publications undermines that market. And this is not a nonprofit educational use - patent applicants are depending on the review of prior art (whether their own review or a review performed by the PTO) for a distinct commercial purpose. At least the first and fourth factors cut strongly against a fair use finding.

The problem is not a failure to recognize the fair use doctrine. The problem is that the copyright law (and the mentality it fosters) is too-encompassing. There are two real defenses of the PTO's conduct, neither of which depend on the legalistic fair use doctrine. First is that the information in these publications is not subject to copyright. Provided the PTO confines itself to using the information, and not selling copies of journals, copyright should not be implicated (even if the PTO has to copy the journal to get at the information). Copyright should cover _publication_ and distribution, not use.

Second is that the PTO is doing this for the public weal (assuming arguendo that patent examination is good for the public). When a person, public or private, is using a work to advance the public good by promoting progress in science and the useful arts, copyright cannot be used to interfere with that use. The copyright law MUST be cabined by the Constitution, and since its only Constitutional authorization limits the purpose of the law, the law must give way when it no longer serves its purpose. Congress lacks the power to grant to authors a copyright enforceable against the PTO, so the copyright Congress granted to authors of journal articles cannot be enforceable against the PTO (no matter what Congress said or intended).

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