With all the heat that publishers are starting to feel from the academic community, you might have thought that they'd avoid upsetting anyone else. But it seems that some publishers have decided to go after lawyers who make patent applications that include copies of academic articles as prior art. As the PatentlyO blog explains: A number of scientific journals have begun to threaten law firms and their clients for submitting copies of journal articles to the USPTO. The typical cease & desist letter that I've seen says something like the following: "We've been trolling through USPTO records and found that you submitted a copy of one of our articles articles to the USPTO and we suspect that you maintained other copies in your files and distributed additional copies within your organization. These actions constitute copyright infringement and are not fair use. We will sue you unless you come into compliance with our CCC licensing scheme." In a way, that's strange: you would think that academic publishers would want to encourage this kind of use, since it establishes their titles as a kind of "gold standard" for prior art. Obviously the prospect of making some easy money proved irresistible.

Surprisingly, perhaps, the USPTO has waded in to this squabble and offered its opinion in a statement (pdf): 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. In the rest of its eight-page document, the USPTO goes on to explain the legal reasoning that led it to come to that conclusion.

It's rather remarkable to see the main US body responsible for promoting one kind of intellectual monopoly -- patents -- asserting that another -- copyright -- doesn't apply. And it will be interesting to see whether publishers want to raise the stakes by taking on the USPTO as well as lawyers, inventors and angry academics.

However, since the USPTO says that it takes "no position on whether additional copies of NPL made during the course of patent prosecution (e.g. for the client, for other attorneys, for the inventors, or for the law firm's future reference) qualify as fair use", publishers would probably do better to concentrate on pursuing licensing fees for that instead.

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