The companies that claim law firms violate their copyrights in scientific articles when the firms submit copies of the articles with patent applications to the U.S. Patent and Trademark Office have sought leave to amend their complaint by withdrawing these claims but will move forward with claims that additional copies the firms make infringe the companies’ copyrights. Am. Inst. of Physics v. Schwegman, Lundbert & Wessner, P.A., No. 0:12-cv-00528-RHK-JJK (U.S. Dist. Ct., D. Minn., pleading filed September 14, 2012). Further details about this litigation appear in issues 31 and 34 of this Bulletin.

The publishers state, “Plaintiffs now seek to file an amended complaint that continues to allege that Defendants have engaged in unauthorized copying in connection with their internal research, but does not allege that this unauthorized copying includes (i) making such copies of a copyrighted work for submission to the PTO as may be required by the rules and regulations of the PTO, (ii) transmitting such copies to the PTO, or (iii) making an archival copy of that work transmitted to the PTO for Defendants’ internal file to document what has been transmitted. To be clear, however, such submissions to the PTO may be evidence of broader use and circulation, which would be relevant to these proceedings.”

The pleading follows the motion to intervene and counterclaim filed by the U.S. Patent and Trademark Office on July 2, 2012, the same day that the court denied the defendants’ motion to dismiss, in which the government sought a declaration that copying or distribution of copyrighted non-patent literature as “necessary and incidental to the filing and prosecution of a U.S. patent application” does not infringe copyright. The plaintiffs contend that their amended complaint would not cause any party to suffer prejudice because preliminary discovery alone has occurred since the suit was filed and “[t]he proposed amended complaint does not expand the complaint except to add additional copyrights to Schedule A, and to add as an additional Plaintiff an affiliate of Wiley which owns one copyright.” The U.S. Patent and Trademark Office has not, as yet, according to the pleading “served or responded to any discovery, beyond a voluntary disclosure.”