Last week was a big week in U.S. copyright law. On Wednesday, the Supreme Court issued its decision in Golan v. Holder, upholding § 514 of the Uruguay Round Agreements Act, which in effect gave copyright protection to certain preexisting works of Berne member countries that are protected in their country of origin, but not protected in the United States (e.g., were in the public domain in the United States). Coincidentally (?), on the same day, a number of popular websites “went dark” to protest the Stop On-line Piracy Act (SOPA) bill pending before Congress. (Proponents of SOPA say that it is necessary to protect intellectual property rights in the internet age, while opponents say that it would promote censorship and stifle the “free market” of the worldwide web.) Not to be left out, on Thursday, the USPTO issued a position paper on the “Fair Use of Copies of [Non-Patent Literature]” in the patent examination process.
The Fair Use Issues
The position paper addresses three issues:
- Whether it is “fair use” for the USPTO to make copies of copyrighted non-patent literature and provide copies to applicants during examination.
- Whether it is “fair use” for the USPTO to provide certified copies of entire file histories, including copyrighted non-patent literature, to members of the public for a fee.
- Whether it is “fair use” for an applicant to make a copy of copyrighted non-patent literature and submit it to the USPTO.
The USPTO considers each of these types of uses to constitute “fair use.”
However, the USPTO “takes no position” as to whether it is “fair use” for an applicant to make additional copies of copyrighted non-patent literature for its own use during patent prosecution, such as to provide copies to the client, inventor, or other attorneys.
The Fair Use Factors
The position paper considers the four “fair use” factors of 17 USC §107:
- The purpose and character of the use—examination is a non-commercial, government purpose
- The nature of the copyrighted work—examiners cite works that are factual, not expressive
- The amount and substantiality of the portion used—examiners usually cite entire journal articles
- The effect of the use on the commercial market for the copyrighted work—use in patent prosecution is expected to have a minimal effect on the commerical market for the copyrighted work
Canada Takes A Different View
I have noticed from my own practice that some patent offices, including Canada, take a different view. When a Canadian examiner cites a copyrighted journal article to reject a patent, a copy is not provided to the applicant. Rather, the applicant has to obtain a copy of the reference at its own expense. This always strikes me as unfair, but it would be interesting to see the legal framework and legal analysis that supports the alternative position of the Canadian Intellectual Property Office.
