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Patent Attorneys Sued For Copyright Infringement 97

Posted by Soulskill
from the sibling-fights-are-the-worst-fights dept.
Zordak writes "Patent blogger Dennis Crouch writes on Patently-O of a catch-22 for attorneys. Patent attorneys are required to submit all prior art that they know of to the patent office. Failing to do so is an ethical violation, and can result in a patent being invalidated. But now the Hoboken Publishing Company and the American Institute of Physics are suing a major patent firm for copyright infringement, because they submit articles to the patent office without paying a separate royalty."
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Patent Attorneys Sued For Copyright Infringement

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  • Looks like its (Score:5, Insightful)

    by Intrepid imaginaut (1970940) on Sunday March 04, 2012 @08:27AM (#39238489)

    intellectual property all the way down...

    • by Anonymous Coward on Sunday March 04, 2012 @10:29AM (#39239183)

      Exactly. And think about the royalties if they have to get a copyright license in order to sue in court for unpaid royalties for documents used in the court case!

      They've invented a perpetual motion IP machine. That's got to be worth a patent.

  • What About ... (Score:5, Insightful)

    by WrongSizeGlass (838941) on Sunday March 04, 2012 @08:29AM (#39238495)
    What about any legal proceeding? I'm sure that there are countless instances of published works used in legal proceedings that aren't copyright related. Do the lawyers need to pay royalties for those as well? What a racket!
    • Re:What About ... (Score:5, Insightful)

      by Black Parrot (19622) on Sunday March 04, 2012 @08:41AM (#39238541)

      What about any legal proceeding? I'm sure that there are countless instances of published works used in legal proceedings that aren't copyright related. Do the lawyers need to pay royalties for those as well? What a racket!

      I would be astonished if this isn't considered Fair Use.

      • I would be astonished if this isn't considered Fair Use.

        I would think so too ... so how is submitting them as prior art to the patent office not fair use?

        • They didn't get paid, that's why it's not 'Fair Use.'

          Yes, I know, it's insane. But copyright owners, a least a vocal minority of them, have been testing the patience of the rest of the Intellectual Property community. For all their hollering, you'd think they had a bunch of Utility-type Patents with no Prior Art.

        • Re:What About ... (Score:5, Interesting)

          by JoelKatz (46478) on Sunday March 04, 2012 @06:26PM (#39242677)

          Actually, it's not just fair use, the content is not copyrightable in this context, under the merger doctrine.

          Copyright only applies to protect one way out of millions of equally-good ways. Shakespeare wrote Romeo and Juliet, but there are millions of other ways to write a story about star-crossed lovers. He is entitled to copyright (well, was entitled) in cases where any of those other ways would work just as well. His copyright doesn't prevent anyone else from performing any function, they just have to express their ideas a different way.

          However, in this case, nothing but the actual article will work. Nothing else will make it possible for the copyright office to reliably determine how and whether the prior art relates to the invention that is the subject of the application. A copyright gives you no power to prevent others from accomplishing any useful function. If your work is the only way to perform that function, copyright yields. (You need a patent to own a function rather than a particular expression.)

          When only one work will serve a functional purpose, merger doctrine applies and copyright protection is unavailable.

          • by Pfhorrest (545131)

            I'm curious: by this principle, if some piece of software is necessary to do something -- say you need an operating system to run a particular program you have but otherwise can't run to get at specific data that doesn't exist in any other format -- would the copyright on the software (in this case the OS) yield in that case? Or would the argument be that because it could, with prohibitive difficulty, be possible to write other software which perfectly emulated the functionality of this software, that it is

      • If I recall, the reason a judge first upheld EULA's many years ago is that act of copying a program's content from the hard drive to main memory was considered "copying", and thus required the consent of the copyright holder. (I could be wrong - I heard this a long time ago.)

        So anyway, if that's true, nothing astonishes me any more regarding what's considered fair use and what isn't.

    • by metacell (523607)

      In my country, official government documents such as court proceedings, protocols, reports, and so on, are not copyrighted. You don't even need to make a "fair use" argument, since copyright doesn't apply to them in the first place.

      I'm guessing it's somewhat similar in most Western countries.

  • If we work on the basis that both patents and copyright exist as a tool to secure a public benefit — a somewhat old fashioned view, I admit, when copyright is increasingly seen as a goal in its own right — one would hope that, if there is a public benefit in the patent system, an appropriate exception to copyright law would be implemented, if not already in place.
    • by KPU (118762)

      But there isn't a public benefit to the patent system.

      • by Drishmung (458368)

        But there isn't a public benefit to the patent system.

        There is---or was. Without patents, companies would guard inventions as trade secrets. An example is the obstetric forceps [uh.edu]. Kept as a trade secret by one family. If more widely known, many women would not have died in childbirth.

        In order to encourage people to release such knowledge into the public domain, patents were developed. The contract is that society grants protection for a limited time and in the end gets the benefit.

        If you are not willing to abide by that contract, feel free to keep your invention

      • Patents are a time-limited right to exclude in exchange for publishing your process/invention. Patent applications are public and can be "invented around" even during the term of the patent. (because the patent holders are forced to publish, and as a result that information is in the public domain). These inventions create jobs and introduce new technology into society. And after the life of the patent, it's free for anyone to make, use, sell, offer to sell, or import. The application is required by la

        • That's nice in theory, but the patents quoted in articles like this the patents are often rather obvious or the descriptions just outline the idea, without really telling the reader how to implement it. So I think patent offices worldwide need to be more strict about requiring
          -a significant inventive step
          -and a patent description that really helps in reproducing the invention.

          If that happens, I guess the patent system could be worthwhile again. As it is right now, I think the flood of crap patents does more

        • by Andy_R (114137)

          "Patents give the proverbial "little guy" the opportunity to compete..."

          That's all very well in theory, but in practice the little guy is faced with literally millions of existing patents, all of which impact his business exactly like laws do, but are deliberately so vaguely worded that it's would require a million dollar multi-year lawsuit to get to the bottom of exactly what they do and don't cover.

          The little guy doesn't just have no chance of competing (because you could throw a thousand lawyers at the p

  • by Anonymous Coward on Sunday March 04, 2012 @08:33AM (#39238507)

    This is not a catch-22, it's a cost of doing business. The lawyer needs to purchase the information for the application and failed to do so.

    Of course it is interesting to see an Intellectual Property (IP) Lawyer fail to guard IP.

    • by Oswald (235719) on Sunday March 04, 2012 @08:53AM (#39238611)

      I vote we can mod parent up and get on to the next thing. People who make their living in IP can hardly expect to just ignore it when the shoe is on the other foot. And couldn't they just bill the extra expense back to their clients anyway?

      • by DoofusOfDeath (636671) on Sunday March 04, 2012 @10:12AM (#39239089)

        I disagree. The ranks of the wealthy are filled with those how managed to get the rules applied mostly to their competitors and not to themselves.

        (To be fair, I think we're all tempted to act like that. But some of the super-rich have been extraordinarily good and/or lucky in achieving biased enforcement of rules meant for everyone.)

      • by gl4ss (559668)

        just to get this clear -

        to do a patent application you will have to use copyrighted information that provides the prior art and you have to pay money for the right to use that information to apply for a patent?

        sounds like patenting patents!

        • by Epimer (1337967)

          You may have to provide a copy of copyrighted material as part of a patent application, if there is a copyright work which contains information which is relevant to your application. For example, a journal article.

        • by bane2571 (1024309)
          It really gets funny when you consider you need to ask for permission to use the copyright and that permission can be refused. With that it should be possible to blacklist people from ever filing patents.
    • by Anonymous Coward on Sunday March 04, 2012 @08:55AM (#39238625)

      Not that I expect anyone to RTFA, but:

      Earlier this year, the US Patent Office issued a memo indicating its belief that copying and submitting copyrighted documents should be considered a non-actionable fair use. Firms already pay for access to the articles and the USPTO also has its own access to most of the articles. The issue is whether the patent applicants must pay an additional fee for making a copy for the USPTO and an additional copy for the in-house file.

      So it's less of patent lawyer not doing due diligence and more of copyright holders wanting to double dip.

    • by dna_(c)(tm)(r) (618003) on Sunday March 04, 2012 @08:55AM (#39238627)

      [...]The lawyer needs to purchase the information for the application and failed to do so.[...]

      Then change the law so that even an IP-lawyer can understand it. This is just excessive greed.

    • by Pinky's Brain (1158667) on Sunday March 04, 2012 @08:59AM (#39238641)

      The information isn't necessarily available for purchase, if it's on paper right of first sale allows you to pass it on ... but if it's an electronic document it could very well come with a license which doesn't allow you to transfer ownership ... at which point you're kinda stuck. RAND is the exception, not the rule ... the rule is "whatever the market will bear, unless not granting a license at all has competitive advantage"

      Of course the same is true for patents, so it's hard to feel any sympathy.

    • by metacell (523607) on Monday March 05, 2012 @08:43AM (#39246751)

      This is not a catch-22, it's a cost of doing business. The lawyer needs to purchase the information for the application and failed to do so.

      Ah, but what if the other party buys the copyright to the publication the prior art is published in, and refuses to license it at any cost?

  • This makes my day! I hope the patent trolls lose everything over this.
    • I hope the patent trolls lose everything over this.

      I'm not sure that the inevitable outcome of this, strengthening the trolling of copyright, would be a good thing?

    • Unfortunately, they will probably just slap the "fair use" label onto this to make it go away.

    • by psxndc (105904)

      wtf are you talking about? These are just law firms that apply for patents, you know, maybe for completely legitimate companies. There is nothing in the article or the summary that says these lawyers help patent trolls. You DO realize just because it involves patents doesn't automatically make it about patent trolls.

      FFS man, torch and pitchfork much?

  • If there is prior art the patent is invalid anyway, isn't it?

    • If there is prior art the patent is invalid anyway, isn't it?

      The submitted patent should be invalid. The copyright on the prior art might still be valid... Patent is not Copyright.

      • by Hentes (2461350)

        True, but in that case why bother submitting the patent?

        • because they added "...on a computer" after it? Or "...on a smartphone"?
        • by Epimer (1337967)

          Because it is rarely immediately obvious whether or not a given piece of prior art entirely encompasses the present application. Or whether or not the present invention is non-obvious (i.e. inventive) over a combination of several pieces of art from the same field.

          The Examiner makes arguments on the basis of such prior art, and that's why they require that copies of relevant prior art are submitted to them during the examination process.

    • by Anonymous Coward on Sunday March 04, 2012 @09:05AM (#39238665)
      "Prior art" in this context usually means "Here's someone talking about a similar idea, but it's different to this application because..."
    • by kanweg (771128)

      No, prior art means stuff known before the filing date (or priority date). The invention disclosed in the patent application may still be New and Inventive.

      Prior art may be detrimental to patentability, of course. It may be necessary to restrict the scope of the claims. But as a patent attorney has usually limited the independent claims such that they are at least Novel over the prior art, the prior art submitted by the applicant may be less interesting than the prior art the Examiner discovers and the appl

    • by JoelKatz (46478)

      "If there is prior art the patent is invalid anyway, isn't it?"

      Then every patent would be invalid because every article is prior art. The patent would only be invalid if the prior art discloses the claimed invention. The point of disclosing prior art is to show that it does not disclose the claimed invention and to show that the benefits of the claimed invention are capable of being achieved.

  • by msauve (701917) on Sunday March 04, 2012 @08:50AM (#39238593)
    No one is being sued because they included copyrighted material in a patent application, as the summary claims.

    From the article, "Earlier this year, the US Patent Office issued a memo indicating its belief that copying and submitting copyrighted documents should be considered a non-actionable fair use."

    The plaintiffs agree. Their complaint is that law firms make and distribute multiple copies of the copyrighted works used in the patent applications: "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."
    • by Nerdfest (867930)

      That's an excellent update, but I think we should have all of the lawyers involved "put to sleep" just in case. Once they get a taste for this sort of thing it's hard to stop. The risk is just not worth it.

    • Summary is accurate ... the plaintiffs argument is just semantic circle jerking.

    • Ah, I see.

      So they're not just evil, they're pedantic assholes, too.

      • by Albanach (527650) on Sunday March 04, 2012 @12:38PM (#39240245) Homepage

        Should you ever have a need to hire an attorney, you may well appreciate that they are pedantic. Sure, that can often be annoying, but without it,we'd introduce a lot of vagueness into our legal system.

        In this case it's documents being copied. But lets say the law firm is litigating over a music CD. They send a paralegal down to the nearest store to pick up a copy, then duplicate that copy for every attorney on the case. Would that be okay?

        How about if it's a computer program. Can they just duplicate it for every attorney because it's part of a case? A movie?

        • by Ironchew (1069966)

          In this case it's documents being copied. But lets say the law firm is litigating over a music CD. They send a paralegal down to the nearest store to pick up a copy, then duplicate that copy for every attorney on the case. Would that be okay?

          How about if it's a computer program. Can they just duplicate it for every attorney because it's part of a case? A movie?

          As far as ethics are concerned, I think that's perfectly okay. Then again, I don't subscribe to the notion of "intellectual property" in the first place.

        • by micheas (231635)

          In California, the answer seems to be, yes if the copy is part of the public record of the case, no if is not.

          IANAA

    • by gstrickler (920733) on Sunday March 04, 2012 @11:11AM (#39239445)

      Two issues with that. First, the actual complaint states:

      14. In connection with researching, filing and prosecuting certain patent applications, McDonnell made and/or distributed to the United States Patent and Trademark Office ("PTO"), and perhaps others, unauthorized copies of copyrighted articles from plaintiffs' journals Such unauthorized copies were used for the commercial benefit of defendants and their clients.

      15. Upon information and belief, defendants made (a) additional copies of the copyrighted works that defendants included or cited in their patent applications to the PTO, including those identified on Schedule A, and (b) copies of plaintiffs' copyrighted works that defendants considered in connection with those applications, but did not ultimately cite or provide to the PTO. Plaintiffs cannot know the full extent of defendants' copying without discovery. Apart from the copying of plaintiffs' works accompanying the patent filings described above, this internal copying infringes plaintiffs' copyrights.

      Which asserts that the copies made for the USPTO are "unauthorized", which conflicts with the previous the USPTO memo clearly indicating it is fair use. It also says "perhaps others" and that they "cannot know the full extent of defendants' copying without discovery", indicating they have no actual evidence of other copying, only suspicion of other copying, and that this lawsuit is a fishing expedition. That alone may be sufficient for dismissal.

      Further, the plaintiff's attorney states "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." Here they basically acknowledge that item 14 in the complaint is irrelevant.

      Perhaps most important is the concept of "access to the information" vs keeping a copy with the filing (the copy sent to the USPTO and the copies the attys are certain to keep for themselves and/or the client). Since access to the information in this case is only by subscription, physical copies of the relevant portions of the documents should be made and kept with the filing (up to 3 copies, one for USPTO, atty copy, client copy). Without doing so, anyone referencing or challenging the filing at a later date will also need a rather expensive subscription to the database at the time they're reviewing the filing. According the the US Constitution, the purpose of granting patents and copyrights is "To promote the Progress of Science and useful Arts...". To me, charging copyright fees for those filings or requiring a current subscription to a database of documents imposes an untenable and unconscionable requirement for someone accessing patent filings.

      Additional copies created for the purpose of performing the research (e.g. by the client, in-house atty/intern/clerk, etc.) should be covered under fair use, after all, the attys do have a subscription to access the information for research purposes, so making a paper copy on which they can write notes would be fair use. Perhaps a ruling that any such additional copies (beyond the 3 I mentioned above) must be destroyed after use/filing of the patent. That's the "best" result I can see for the plaintiffs in this case.

      • by slyborg (524607)

        Never have mod points when you need 'em. Excellent summary.

        • Thank you. I can't decide what's worse, not having mod points when you want them, or having them when you also want to comment on an article. All these choices.... ;)

      • by msauve (701917)
        "Unauthorized" != "infringing."

        You quoted, but ignored their explicit admission that the copies provided to the patent office are not a subject of the action: "Apart from the copying of plaintiffs' works accompanying the patent filings described above, this internal copying infringes plaintiffs' copyrights." They do not claim the patent filings were infringing, only that they were unauthorized (and hence only allowable under an exception such as fair use).

        They're asking for discovery to see who, other tha
      • by russotto (537200)

        Which asserts that the copies made for the USPTO are "unauthorized", which conflicts with the previous the USPTO memo clearly indicating it is fair use.

        A copy made under fair use is always unauthorized by the copyright holder; if it was authorized, fair use wouldn't come into play. So there's no conflict here.

        As for the rest of it... yeah. They're attempting to abuse the reproduction right in order to make an enormous cash grab from patent filers.

      • by khipu (2511498)

        "unauthorized" merely means that the use wasn't explicitly authorized. Most fair use is "unauthorized"; that's the whole point of fair use.

    • by Overzeetop (214511) on Sunday March 04, 2012 @01:02PM (#39240441) Journal

      Surprisingly, this is very relevant and a major issue for groups which use material created by others. It's much more relevant today with making physical copies (and digital ones) so easily. It strikes directly to the heart of whether copyright is a very literal thing or whether it's a concept.

      For example: musical groups - especially amateur ones - to comply with copyright law effectively need to purchase a copy of an arrangement for each member of the group. My group buys a few extra, for guests and new members. We might only have 40 members, but we typically purchase 50 copies. Often we buy a master and a license that lets us make the reproductions (for low volume charts, a production run is not feasible). Sometimes we make minor changes - interpretations involving tempo, pauses, minor musical changes. To keep current we have to manually annotate 50 copies. We can't for example, make a modification and hand it out, or make a second set with markings for stage direction for everyone to have. The question is whether it matters that we can make these teaching tools. There are only 40 of us and we bought a copy for every single person - does it really matter if I give each man an extra copy with our special data overlayed? How about if I deliver it by PDF? Do I have to pay a fee every time a man downloads the pdf - say if he's not savvy and just looks at the music on his computer, re-downloading it into the browser's reader form the website's "members only" area every time he wants to practice. That doesn't appear to be the intent...but it appears to be the law.

      This matters for a law firm. If they purchase the right to a copy of the work, then annontate it and send to to everyone - either on paper or digitally - have they made more "copies" for the purpose of copyright. Let's say they pay for a copy for every lawyer and consultant on the case. If a consultant marks up the one he receives, then makes a copy and mails it back to the original lawyer, is that an infringing copy? If the original lawyer bought a copy for everyone, and the consultant makes a copy and sends it back - has a copy been made? (Yes) Is there any value in the copy? Maybe...the recipient already owns one, and has paid for it so is getting another copy (presumably for use in the original context) really infringing?

  • Yo dawg (Score:5, Funny)

    by Anonymous Coward on Sunday March 04, 2012 @08:52AM (#39238599)

    We heard you like suing people so we put a copyright in your patent process so you can be sued while you're suing.

  • Relevant publications have to be submitted by law. If they are in the file submitted anonymously, then I don't think that the applicant has to re-submit them. Or could submit them by reference to something in the file.

    There is a similar situation where you receive a search report containing copyrighted articles.

    For reasons of efficiency and cost, this should be solved at patent office level. Just raise the search fees a bit. If every patent attorney has to arrange for it, the cost gets excessive because of

  • by msobkow (48369) on Sunday March 04, 2012 @09:01AM (#39238657) Homepage Journal

    My understanding is that you are required to cite any relevant patents or products, and explain how your patent is different.

    Including an entire copy of the related prior art is not required for a patent submission; only the specifically-related fragments which would be covered by "fair use" are required. i.e. Specific quotes and citations, not entire texts.

    • Including an entire copy of the related prior art is not required for a patent submission; only the specifically-related fragments which would be covered by "fair use" are required. i.e. Specific quotes and citations, not entire texts.

      While that would be nice, unfortunately, that just opens one up to litigation... "You submitted a quote of this paragraph of the article, but not this other, more relevant paragraph? What exactly were you trying to hide, sir?!" As a result, we're pretty much required to cite the entire article - and therefore, submit an entire copy.

      • by _Ludwig (86077)
        Why isn’t it incumbent upon the examiner to follow citations? When you submit an academic paper, you don’t include the full text of everything in the bibliography.
        • When you submit a paper, it goes on record as having been considered in the examination process. The examiner might or might not follow up on citations in a submitted paper, but those citations aren't automatically recorded as having been considered; which is why you don't have to submit full copies of them.
    • by Epimer (1337967)

      The USPTO require that you submit full copies of non-patent prior art to them; a simple reference isn't enough for those purposes.

      The process is effectively backwards from how you describe it, anyway: the Examiner goes through the cited art (and any they've searched for themselves) and raises any objections (novelty, inventive step, etc.) from such art. The onus is then on the applicant to explain why those objections are moot.

    • I am a patent examiner, and your understanding is wrong. Applicants must submit complete copies of journal articles if they want the article considered. Also, they don't *have* to explain how your invention is different, although it might be a good idea to do so.
  • by Chrisq (894406) on Sunday March 04, 2012 @09:24AM (#39238765)
    1) Commit a crime
    2) write a story about it
    3) sue all witnessed of copyright infringement
    4) profit
    • Don't even write a story about it. THe crime itself is a "performance" and any depictions of it are unauthorized infringements on your intellectual property.

      • by Epimer (1337967)

        A performance lacks fixation and would therefore not qualify for copyright protection in its own right. If it's scripted, then a performance of the scripted work would infringe the copyright of the script, not the performance.

    • by Epimer (1337967)

      I think you've missed out a really fundamental part of how copyright works here.

      Are people who read a book infringing the author's copyright in the work?

  • Hmm, using copyright law in the war against patents... I think I'm gonna patent that and then copyright the patent!
  • Read through the OP before summarizing somewhat sloppily, please! The publisher that's initiating this is John Wiley which is based in Hoboken, not named after Hoboken. Wiley is a major publishing house that most academics and many others will recognize. This move might remind you of Elsevier's role in the recently-pulled Research Works Act [universityaffairs.ca].
  • Seems like a good argument for eliminating both copyright and patents.
  • by Anonymous Coward

    Patent lawyer vs. scientific journal. With all of the patent trolling going on it is easy to side with the journal, but they aren't as innocent as they seem.

  • 1) i come in peace
    2) If you want to challenge me to a spelling contest i suggest you look for another playmate
    3) language is a living thing, people expressing themselves in new ways is what makes dictionaries grow and languages get richer, the dictionary does not dictate what the language is, nor does the gremmar commandments
    4) If you're the kind of person that looks for structure in sentences other than the idea they express in order to reply you might probably have made a very good lawyer of the paten
  • He who lives by the sword shall die by the sword.

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