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PTO States Its Position On Applicability of Fair Use Doctrine To Non-Patent Literature Used During Patent Prosecution

On January 19, 2012, the United States Patent and Trademark Office (“PTO”) issued a written paper explaining in detail the basis for its position that the fair use doctrine provides broad protection for the use of copyrighted non-patent literature (“NPL”) during patent prosecution. The PTO has concluded that under Section 107 of the Copyright Law, it is fair use (a) for patent examiners to provide patent applicants with copies of copyrighted NPL during the course of patent examination, (b) for the PTO to provided certified copies of file histories to the general public (containing NPL) for a fee, and (b) for an applicant to make a copy of NPL and submit it to the PTO.

The PTO supported this conclusion by providing a detailed analysis of the four “fair use” factors under Section 107 of the copyright law, including (a) the purpose and character of the use, including whether the use is of a commercial nature or for non-profit educational purposes, (b) the amount and substantiality of the portion used as compared to the copyrighted work as a whole, (c) the nature of the copyrighted work, and (d) the effect of the use on the potential market for or value of the copyrighted work. According to the PTO three of the four factors support its conclusion that the fair use doctrine immunizes use of copies of NPL during patent prosecution from claims of copyright infringement.

As for factor one, the PTO pointed out that these uses were for non-commercial, governmental purposes-facilitating governmental review of patent applications. Further, according to the PTO, the use of the NPLs is transformative it is to document whether and the extent to which the invention is novel and/or non-obvious when compared to the prior art reflected in the NPL. The PTO concluded that this factor strongly supports applicability of the fair use doctrine.

As for factor two, the PTO acknowledges that entire NPL’s are routinely copied, a fact which tends to undercut applicability of the fair use doctrine. However, the PTO points out that it instructs examiners and applicants to only copy so much of prior art references as is necessary in the circumstance. The PTO further points out that as a practical matter, copying less than a total NPL is often not an option. Since the use of the NPL’s is transformative, the PTO concludes that factor two is “neutral” with respect to whether the fair use doctrine applies.

As for factor three, the PTO points out that factual works generally receive less copyright protection than expressive works, and most NPL’s are works of non-fiction, not expressive works. Further, NPL’s are usually published works and, therefore, they do not involve the special concerns that exist for unpublished works. Therefore, the PTO asserts that factor three supports applicability of the fair use doctrine.

Finally, as for factor four, the PTO concludes that the uses of NPL’s during patent prosecution do not impair the marketability of the copyrighted NPL. NPL’s are generally published several years before they are used in patent prosecution and by the time they are used in patent prosecution, the NPL’s have only limited commercial value. The PTO points out that by not making copies of NPL’s available to the public in its PAIR system, it reduces the extent to which the copies of NPL’s used during patent prosecution will become available on the internet. As the PTO points out, by the time most NPL’s (primarily scientific papers) are used during patent prosecution, there is usually little commercial value left for them, since their only “market” is for use in patent prosecution. Thus, the PTO concludes that factor four also supports applicability of the fair use doctrine.

Based on this four-factor analysis, the PTO concludes that the fair use doctrine generally allows the PTO examiners and applicants to copy and use NPL’s for purposes of patent prosecution. The PTO concludes that the use of copies of NPL’s for purposes of patent prosecution has no meaningful impact on the marketability of value of such NPL’s and this factor is recognized as the most important when analyzing the applicability of the fair use doctrine. Further, the PTO points out that the public interest strongly supports use of copies of NPL by the PTO and applicants because these uses support the PTO’s mission to advance the sciences and useful arts by reviewing patent applications and issuing patents. Members of the patent community and the general public certainly have a strong interest in the maintenance by the PTO of a complete record of the events that occur during patent prosecution, including inclusion in certified file histories copies of the prior art references that the applicant or examiner included in the record.

Some might argue that the analysis of the PTO on these issues is more academic than practical. Yet the issue of how copyright law applies to patent prosecution activities has been long the subject of significant debate among practitioners. The guidance provided by the PTO will come as a relief to many practitioners who have long worried that they might find themselves on the wrong end of a law suit for statutory damages by an enterprising author of an NPL and/or a law firm retained by him on a contingency basis to seek statutory damages. While Court’s are not obligated to follow the PTO’s analysis, without doubt they will give considerable deference to the PTO’s analysis in cases where copyright infringement is alleged for use of NPL’s during patent prosecution. Thus, in the final analysis there is now a strong likelihood that courts will find that the fair use doctrine allows applicants and the PTO to freely make and use copies of NPL’s for purposes of patent prosecution.