By Donald Zuhn —
Last week, the Office of the General Counsel for the U.S. Patent and Trademark Office issued a memorandum in response to several inquiries the Office has received concerning copyright infringement and the use of non-patent literature (NPL) in the examination process. The memo, which was sent by USPTO General Counsel Bernard Knight, Jr., discusses the application of the fair use doctrine to the use of NPL during examination.
The memo begins by stating three issues involving the use of NPL:
1. Whether it is fair use for the USPTO to make copies of copyrighted non-patent literature (NPL) and provide such copies to an applicant in the course of patent examination?
2. Whether it is fair use for the USPTO to provide certified copies of entire file histories, including copyrighted NPL, to members of the public, for a fee?
3. Whether it is fair use for an applicant to make a copy of a piece of copyrighted NPL and submit it to the USPTO?
With respect to the first issue, the memo notes that the Office "currently obtains much of its NPL through licenses, and has ensured that its licenses permit it to make copies of copyrighted NPL that is used in examination." For unlicensed NPL, the memo states that the Office considers the copying and providing of such references to applicants to be protected by the doctrine of fair use. In order to prevent copyrighted NPL from being copied "for reasons unrelated to patent matters," such references are not provided on PAIR. As for the second issue, the Office considers that providing certified copies of entire file histories, including copyrighted NPL, to members of the public for a fee to also be protected by the doctrine of fair use. Finally, with regard to the third issue, the Office considers the copying of copyrighted NPL by patent applicants and their attorneys and the submission of those copies to the USPTO "pursuant to the USPTO's disclosure requirements," to be protected by the doctrine of fair use. The memo adds, however, that "[t]he USPTO takes no position on whether additional copies of such NPL made by an attorney or applicant during the course of patent prosecution (e.g. for the client, for other attorneys, for the inventor, or for the law firm's future reference) qualifies as fair use." The memo also warns that "[t]o the extent applicants have obtained copyrighted NPL pursuant to a license, applicants are responsible for ensuring that the license is not inconsistent with fair use."
The memo explains that the Copyright Act provides four factors for assessing whether a particular use is a fair use, and thus considered not to be an infringement of a copyright. Citing § 107 of the Copyright Act, the memo states that these factors are:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.
Applying the four factors to the first issue, the Office notes that "[i]n the 1960s, as part of an initiative to expedite the examination process, the USPTO began providing copies of cited prior art to applicants." With respect to copying and providing unlicensed NPL to applicants, the Office notes that the first factor "weighs in favor of fair use because the USPTO is not using the work for a commercial purpose." The Office also cites "several cases dealing with use of copyrighted works in connection with non-commercial, government functions [that] favor[] fair use." As to the second factor, the memo states that "the USPTO and the applicants are interested in the NPL only for its factual, rather than its expressive, content," and notes that NPL typically consists of published works, which "receive less protection than unpublished works." The Office acknowledges that the third factor "tends to be neutral in this case," because "[i]n many cases . . . an entire publication (e.g., an entire journal article) is considered relevant." With regard to the fourth factor, the memo states that:
There is no basis for concluding that the USPTO' s provision of copyrighted NPL to patent applicants in the course of patent examination impairs the marketability of the copyrighted NPL. The NPL at issue has typically been published several years before the USPTO's use and by the time of the USPTO's use usually has only limited commercial value. In addition, by not providing copies of copyrighted NPL in its Public PAIR system — and thereby preventing any possibility of systematic infringement through access to USPTO's databases — the USPTO has taken steps to ensure that copies of NPL used in examination do not become freely available on the internet.
The memo therefore concludes that the Office's copying and providing of copyrighted NPL to applicants constitutes fair use.
On the second issue, the memo contends that "[t]he fair use analysis for providing file wrappers to the public for a fee (pursuant to 35 U.S.C. 9 and 37 C.F.R. 1.19( a)) is similar to the analysis for providing copies of the NPL during examination." The Office states that "[t]he fact that the USPTO charges a fee for the certified file wrapper does not alter the conclusion that the use of the work is not for profit," noting that "[t]he fee is calibrated to reflect cost recovery, and the USPTO does not profit from making copies of any particular copyrighted work." The memo therefore concludes that "the incidental inclusion of copies of copyrighted NPL in a copy of a certified file wrapper offered to the public for a fee" also constitutes fair use.
The memo next applyies the four factors to applicants' copying and submission of copyrighted NPL. The memo contends that "[t]he fair use analysis for an applicant's IDS submission is very similar to, and reaches the same result as, the fair use analyses for the USPTO uses [specified in the first two issues]." With respect to the first factor, the memo states that "[t]he case for fair use . . . might be even stronger for the applicant, because the applicant is required by law to submit the prior art to the patent office." In particular, the memo explains that "[g]iven that the applicants here are not 'exploiting' the copyrighted work, and are instead merely submitting it, pursuant to a legal requirement, based on its factual, rather than its expressive, content, the first factor weighs heavily in favor of fair use." As to the fourth factor, the memo states that "it is also worth noting that the copies of NPL that law firms typically submit to the USPTO have been obtained through legitimate, licensed databases, and thus have already been paid for once," adding that "[t]he copyright holder has already been compensated for that use (which would not typically have occurred but for the legal requirement imposed by the patent system)." The memo therefore concludes that "it is fair use for an applicant to make copies of NPL and submit those copies to the USPTO during examination in an IDS." The memo provides a bit of a disclaimer, however, reminding applicants that "to the extent they have obtained copies of NPL through licenses, they should consult those licenses to ensure that any proposed use of the NPL is within the scope of the license."
Hat tip to Greg Aharonian for alerting the readers of his e-mail newsletter to the Office's memo on the use of NPL during examination.
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