Patent lawyers are in the crosshairs of some scientific journal publishers for alleged copyright infringement.

In recently filed lawsuits, publisher John Wiley & Sons and the American Institute of Physicists claimed that lawyers and their Chicago-and Minneapolis-based law firms had wrongfully copied journal articles.  The plaintiffs made good on their threats to pursue lawyers who file copies of scientific articles as part of the patent application process, and who presumably make a copy of the public filing for an internal file and for the inventor.

This dispute has been brewing for quite some time, with publishers attempting to compel the purchase of additional licenses.  The United States Patent and Trademark Office has stepped into the matter, stating recently: “Patent applicants or their attorneys sometimes make copies of copyrighted NPL [non-patent literature] and submit those copies to the USPTO, pursuant to the USPTO’s disclosure requirements. The USPTO considers this copying to be protected by the doctrine of fair use.”  The USPTO declined to take a position about whether additional copies of NPL made during the course of the patent application process (such as for the inventors, the client, or other lawyers) qualify as fair use.

Patent lawyers are required to submit “prior art” to the USPTO.  They feel justified in their actions, and the USPTO appears to have taken their side.  Publishers and scientific organizations are looking for expanded revenue sources in a shrinking economy. This may be the first salvo in a long war, and will be closely watched.