John Wiley, Physicists Sue Patent Lawyers Over Journals

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In a sign the country’s intellectual property laws may be getting out of hand, copyright lawyers are suing patent lawyers for using scientific journals to prepare patent applications.

In lawsuits filed this week, publisher John Wiley & Sons and the American Institute of Physicists claimed that lawyers and their firms in Chicago and Minnesota wrongfully copied journal articles.

The suits make good on journal owners’ threat last month that they would sue patent lawyers who didn’t buy additional license to make internal copies of the journal articles.

The case is important to both lawyers and inventors because scientific articles are an integral part of the patent process. The articles are often included with the bundle of “prior art” that an inventor must submit to the patent office to show that the invention is new. In order to prepare the application, lawyers will often make copies for their associates, the inventor and the patent office.

The journals’ demand is proving controversial, in part because it will increase the overall cost of the patenting process. The US Patent Office itself last month issued a memo saying it was fair use to copy articles for submission with an application, noting that applicants are required by law to do so.

John Wiley and the publishing industry have been increasingly willing to use aggressive legal strategies to enforce copyright, and this latest move could prove both lucrative and risky. On one hand, law firms have the deep pockets to provide a new licensing revenue stream.

On the other hand, the move could trigger a backlash. While John Wiley has enjoyed quiet support in its campaign to sue people who share its “For Dummies” books without permission, these new lawsuits target people who have already paid to use the journals in the first place. Groups like the Copyright Clearance Center say the extra license demand is no different from asking a group to pay more to make internal photocopies of a news article.

It’s unlikely the patent community will see it that way. And John Wiley may receive less general sympathy considering that the authors of the journal articles are typically academics who were never paid for the articles in the first place. (See their complaints in this good Economist piece about the ‘Academic Spring‘).

The publishers’ strategy appears to involve making a test-run in court against the two firms, Schwegman, Lundberg & Woessner in Minnesota and McDonnell Boehnen Hulbert & Berghoff in Chicago. If the firms fold their cards and settle, John Wiley and the physicists may be emboldened to go after larger firms.

Patently-O, a blog that is the bible for US patent lawyers, was not impressed with the copyright demands when they were first raised in January.

Update: Professor Dennis Crouch of Patently-O believes the patent firms have a strong legal case: “It will also be easy for the law firms to obtain an opinion that internal copying also qualifies as a fair use under Section 107 of the Copyright Act.” His full post is here.

A copy of the Minnesota lawsuit is below:

John Wiley, Physics v Patent Lawyers

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