'The Weakest Infringement Claims Of All Time'??? Patent Prosecution And The Physics Of Fair Use

When patent prosecutors file applications with the United States Patent and Trademark Office (PTO), they are required by law to include "all information material to patentability," which typically includes copies of scientific articles that may disclose relevant prior art. But are they required to get the copyright holder's permission before submitting these articles? If they don't, is it copyright infringement?

The American Institute of Physics (AIP) thinks so. Alongside publisher and co-plaintiff John Wiley & Sons, Ltd., the AIP has just completed filing a series of four lawsuits against patent prosecution law firms in Illinois, Kansas, Minnesota and Texas. Each complaint alleges that the law firm in question infringed AIP's copyrights by (1) submitting copies of copyrighted articles to the PTO on behalf of clients; and (2) making copies of the articles for internal use by the law firm during the patent prosecution process.

So what should the defendants do? A quick-strike motion to dismiss, perhaps? Surely, there must be some little-used but devastating doctrine, lurking among the pages of Nimmer on Copyright, which precludes infringement claims against copying that is required by law? Actually, there is no such doctrine. Rather, as the law stands now, it appears that either a license or a fair use analysis (something that can be very difficult to vindicate before summary judgment) is required before submitting copyrighted materials to the government, even if that submission is legally required.

Although there are no cases on point, the closest analogy is in the litigation context, where a party may seek to introduce (and thereby make available to the public) material evidence that happens to be copyrighted. For example, in Jartech, Inc. v. Clancy, 666 F.2d 403 (9th Cir. 1982), likely the first case addressing this issue, the Santa Ana City Council sent an agent to surreptitiously record a pornographic film for use in a public nuisance proceeding against an adult theater. Rather than quickly disposing of the issue, for example by establishing a litigation "privilege," the Ninth Circuit conducted a full blown fair use analysis, and determined that the City Council's use was fair, since its "purpose and character" was so different than the film's "intrinsic use," and since it was so unlikely to upset the film's intrinsic market.

Nevertheless, the need to conduct an individualized fair use analysis in each case, while burdensome for...