Copyright in Prior Art

Two publishers have launched copyright infringement actions against two U.S. law firms for allegedly reproducing copies of publications and submitting copies to the United States Patent Office as prior art.

The lawsuits name McDonnell Boehnen Hulbert & Berghoff and Schwegman Lundberg & Woessner as defendants. The complaints seem to be directed to both internal copies created by the firm for their files as well as copies submitted to the USPTO.

Patently-O has more details and copies of the Complaints.

In January, the USPTO released a memo from its general counsel on the issue of copyright infringement and prior art submissions and took the position that copies filed with the USPTO were covered under the United State’s fair use doctrine.

In Canada, prior art is also typically provided by patent applicants and their agents to the Canadian Patent Office. Would Canada’s fair dealing provisions allow such reproduction to be made without authorization?