In a bench ruling, a federal court in Texas has reportedly determined that patent attorneys did not infringe scientific article copyrights by making copies for use in patent applications, finding that uses associated with patent prosecution are protected under the fair-use doctrine. Am. Inst. of Physics v. Winstead PC, No. 12-1230 (U.S. Dist. Ct., N.D. Tex., Dallas Div., decided May 22, 2013). Judge Barbara Lynn had earlier ruled that the law firm did not infringe the copyrights by providing copies to the U.S. Patent and Trademark Office (USPTO) as prior art, but allowed the plaintiffs to amend their complaint to allege that the firm maintains an unlicensed “library” of non-patent literature in violation of copyright law.

The firm denied that it kept such a library or that it profited from incidental copying of articles that its attorneys review while preparing and prosecuting patent applications or send to clients as part of the application process. In this regard, the court reportedly said that it was “unimaginable” that attorneys would be required to remove the articles in a USPTO response to an application before forwarding it to a client and said she would not give the publishers unlimited discovery to “slop around to find something bad” in the law firm’s practices. The court will apparently issue a written decision to explain her fair-use analysis and granted the plaintiffs limited discovery on their claim that the firm has infringed its copyrights by sending an article to foreign co-counsel as part of a foreign patent application. She evidently cautioned that countries with patent laws similar to those in the United States—that is, requiring the submission of prior art—would prompt her to issue a similar fair-use ruling.

The plaintiffs, several scientific article publishers, sued other law firms raising similar copyright infringement allegations in Minnesota and Illinois federal courts. Additional information about those suits appears in issues 31, 34 and 37 of this Bulletin. See Law360, May 22, 2013.