In a sign of the times for America’s intellectual property regime, a federal judge had to break up a squabble between patent lawyers and copyright lawyers over the scientific articles that are submitted as part of most patent applications.
This week, US Magistrate Judge Jeffrey Keyes sided with the patent lawyers, ruling that the reason they made unlicensed copies of the articles was to comply with the law for submitting applications to the patent office — and not to compete within the market for scientific journals.
Publisher John Wiley had argued that Minnesota law firm, Schwegman Lundberg & Woessner, had assembled a private research library and that they should pay a license fee for doing so. The judge disagreed, saying the patent lawyers’ qualified for “fair use” – an exception to copyright law that applies certain activities.
“These are not the acts of a ‘chiseler,’” Keyes ruled at the conclusion of a four-part fair-use analysis, noting that the patent lawyers’ use of the work was transformative and did not impinge on the original market for scholarly journals. He also wrote that the lawyers’ copying of the work did not prevent a fair-use finding (an argument that could help Google in its long-running fight over book-scanning).
The case initially turned on the journal copies that the lawyers submitted to the patent office. John Wiley, however, withdrew this claim after the Patent Office took the unusual step of issuing a public menu stating that the practice was fair use (under patent law, applicants have to submit scientific articles and other so-called prior art to show an invention is new).
The publisher then chose instead to focus on the copies that the law firm used internally. In the case of Schwegman, the firm downloaded copies of the articles from the patent office or obtained them by email or on public websites. (For one article, the firm paid for a license from the American Institute of Physics but the publishers still wanted them to pay again for the internal copies they made.)
The decision is a clean win for the patent lawyers but still has to be affirmed by a District Court. The case is also good news for fair use advocates. There is, however, one potential downside: some patent lawyers and their clients will now have more money to continue their ruinous trolling campaigns that risks crippling the technology sector.