#patentwar

Reporting and Photography by Franklin Graves

A string of copyright infringement cases were recently filed by STM Publishing against multiple patent law firms for allegedly violating U.S. Copyright law. How did they violate copyright law? They submitted full-text versions of scholarly articles along with their patent filings, fulfilling a requirement of the Patent Act.

(Above: Panelists, from right to left, Robert Stoll, Dale Cendali, Allan Adler, and Stephen Gillen discuss the ramifications of the USPTO's relative article filing requirements.)

"There is no doubt that the cases are exemplifying the current debate of what the scope of IP protection should be and what the current rights are to use someone's protected work," said panelist Ms. Dale Cendali. Ms. Dale Cendali continued by pointing out a few of the implications these cases can have across the board:

The cases could be very narrow in the outcome - what can law firms do with articles?

These cases will probably be viewed in relation to the larger war on IP issues.

Both sides of the argument will be using the case outcomes to support their views.

One audience member posed the question: "Could it be that the NIH is incentivizing authors to publish in open journals that don't require licensing?" However, Mr. Allan Adler responded explaining that there is no such thing as "free publishing." He says the focus of the question then becomes "cost shifting."

Mr. Adler continued in pointing out that, according to patent filing rules, "you can provide relative portions of an article, rather than the actual article." However, it seems that the common practice is to submit the entire scholarly article out of fear that a patent will be denied for not providing enough information to the examiner. The cases involved patent filings which included the entire article.

As Ms. Cendali said, "We are in interesting time right now where fair use is being pushed & expanded & stretched." It will be interested to see how these cases turn.

"I would hope that with the change in patent law, that attorneys would be more secure in providing a limited amount," says Mr. Robert Stoll. "But, back before the "Therasense case", inequitable conduct was coming up frequently and forcing attorneys to be overly cautious."

Mr. Stephen E. Gillen (@sgillen203), a partner at Wood Herron & Evans LLP in Cincinnati, Ohio, moderated the program. Additional program speakers included: Mr. Allan Adler, General Counsel and Vice President, Government Affairs, at The Association of American Publishers in Washington, D.C., Ms. Dale Cendali, a partner at Kirkland & Ellis LLP, in New York City, New York, Mr. Fred Haber, Vice President, General Counsel and Secretary of Copyright Clearance Center in Danvers, MA and Mr. Robert L. Stoll, a partner at Drinker Biddle & Reath LLP in Washington, D.C.