A2K Meets Prior Art

The civil society Access to Knowledge (A2K) movement has been leading a valiant fight to ensure that we all have access to information in the digital domain.  They are addressing issues large and small - making sure that the visually impaired can access digital materials through screen readers that require processing digital works to make them accessible or making sure that search engine operators can actually process works to create search indexes. Much of the patent cognoscenti I've talked to tend to look down on anything that seeks to loosen enforcement of intellectual property law.  They tend to take a very conservative view when it comes to these issues.   And most of the folks I've talked to view the access to knowledge crowd as a bunch of progressive kooks who just don't understand the rights of IP owners.

I think things are about to change.

Enter two lawsuits in which  John Wiley & Sons and American Institute of Physics are suing two leading patent prosecution law firms, McDonnell Boehnen Hulbert & Berghoff and Schwegman, Lundberg & Woessner, for making unauthorized copies of journal articles as part of their preparation and prosecution of patent applications.  The nature of action in the complaint says,

 "This is an action for copyright infringement. It arises from the
unauthorized copying and/or distribution of plaintiffs' copyrighted works by a law firm, and its professionals, in connection with their filing and prosecution of patent applications, so that defendants and their clients may reap a profit."

So what exactly was their copyright infringing behavior?

"In connection with researching, filing and prosecuting certain patent applications, Schwegman made and/or distributed to the United States Patent and Trademark Office ("PTO"), and perhaps others, unauthorized copies of copyrighted articles from plaintiffs' journals, including but not limited to those identified on Schedule A. Such unauthorized copies were used for the commercial benefit of defendants and their clients."

Basic Wiley and the American Institute of Physics are saying that when patent law firms make copy of journal articles to submit as prior art to submit with their patent applications that they are infringing the copyright.  Apparently it's not the articles that actually get sent to USPTO that they have the problem with, it's the copies of the articles that are made internally at the firms to support preparation and submission they have the problem with.  The law firms are depriving the copyright owners of their economic rights.

Wiley's lawyers aren't planning on going after USPTO because the Government has made it's position clear, submission of copies of articles as part of a patent application is fair use. Soon they will have other battles to fight with the Government as the Feds move forward on requiring that  journal articles that report on publicly funded research be made available to the public who paid for the articles free of charge.

These two law suits should be interesting to watch as the law firms who generally seek to protect their clients intellectual property rights have to form their arguments why it's ok to infringe the copyright holder's rights to support their work supporting patent applicants.

You can read one of the complaints here. (They are both essentially the same.)