Fair Use during submittal of prior art during patent prosecution: John Wiley & Sons v. McDonnell Boehnen

Dennis Crouch today reports on John Wiley & Sons v. McDonnell Boehnen Hulbert & Berghoff.  The crux of this case concerns the disclosing and submitting material prior art to the patent office during patent prosecution.  When this material consists of copyrighted articles like academic journals, problems may arise when subsequent copies are distributed within the law firm, retaining file copies, distribution of pdf’s, and use by a government agency.

http://www.patentlyo.com/patent/2012/04/copyright-lawsuit-against-patent-firms-continue-firms-claim-fair-use-and-copyright-misuse.html?utm_source=feedburner&utm_medium=email&utm_campaign=Feed%3A+PatentlyO+%28Dennis+Crouch%27s+Patently-O%29

Similar copyright obligations may be created during patent litigation.  Non-patent prior art (let’s say academic articles) are located, copied, and submitted to the law firms for consideration regarding patent invalidity.