In American Institute of Physics v. Schwegman Lundberg & Woessner, the District Court of Minnesota recommended granting of summary judgment that use of copyrighted articles to prosecute patent applications is a fair use. Note fair use is a defense to a charge of copyright infringement. Section 107 of the 1976 Copyright Act, states four factors to consider if fair use exists: (1) the purpose of the accused use; (2) the nature of the copyrighted work; (3) the proportion of the whole work used; and (4) the effect of the use on the potential market for the copyrighted work.
The court stated the law firm’s purpose in copying the articles was to meet legal requirements of disclosing non-patent prior art to the USPTO. This contrasts with the copyright owner's primary purpose to publish research and discoveries to the scientific community. Although the whole work was used, the court found no evidence the use impacted the current or potential market of the copyrighted works. The court's opinion appears well reasoned, but the publisher may have too much at stake to not appeal. Because we don't know if this matter is resolved, patent attorneys may want to limit printing and copying of non-patent literature.
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