On June 12, the Patent and Trademark Office (PTO) moved to intervene as a defendant and counterclaim plaintiff in a lawsuit against the patent firm, McDonnell Boenen Hulbert & Berghoff LLP that John Wiley & Son accuses of copyright infringement in filing publications in information disclosure statements.
The PTO states copying or distribution of copyrighted material is a necessary and incidental part of patent prosecution and the damages sought by John Wiley & Son interfere with laws that exist to implement the Constitution’s goal for Congress to promote the progress of the useful arts (i.e., technology). The PTO's counterclaim for declaratory relief of non-infringement and fair use also argues the publications are submitted solely for their ideas and factual content and not for any expressive content.
I hope this can be resolved favorably for the public. Disclosure of non-patent literature is required in some cases to meet applicant's duty to disclose material literature of which they are aware to support examination. To make applicants pay fees (large or nominal) to each of the many publishers will be expensive for applicants or will cause some non-risk adverse applicants to disclose less non-patent literature which will not benefit the public.
Copyright © 2012 Robert Moll. All rights reserved.