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As Bob Stembridge of Thomson Reuters pointed out at the 2011 PIUG Annual Meeting, 36 Patent Offices worldwide trust DWPI for their research. This leads me to a rather pointed series of questions.
What is the Fair Use rule for this copyrighted material?
1) Can an examiner cite and provide a full DWPI abstract if said abstract is required to convey English language information for an otherwise non-English language document? (I assume this is all dealt with in the contracts between Thomson and the Patent Offices.)
And more to my needs...
What is the Fair Use for this copyrighted material by parties providing non-examination services using the Patent Office systems?
2) Can Patent Offices providing commercial (non-examination) services provide these abstracts to their paying customers?
3) Can members of the public utilizing Patent Office systems to provide commercial services provide these abstracts to their paying customers?
Since I assume the answer to #2 and #3 is no, what is the Fair Use of these abstracts? None, a 3 word excerpt, a 10 word excerpt, the whole thing, or we'll tell you in court?
To paraphrase from the US copyright page (http://www.copyright.gov/fls/fl102.html) regarding Fair Use (bolding added for emphasis):
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Section 107 contains a list of the various purposes for which the reproduction of a particular work may be considered fair, such as criticism, comment, news reporting, teaching, scholarship, and research. Section 107 also sets out four factors to be considered in determining whether or not a particular use is fair:
- The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes
- The nature of the copyrighted work
- The amount and substantiality of the portion used in relation to the copyrighted work as a whole
- The effect of the use upon the potential market for, or value of, the copyrighted work
The distinction between fair use and infringement may be unclear and not easily defined. There is no specific number of words, lines, or notes that may safely be taken without permission.
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As always, thanks for any replies. I imagine this is a subject that has been addressed in years past, but if so, I can find no record of it being saved for public consumption.
Dominic DeMarco
www.demarcoip.com
2 Comments
Hide/Show CommentsJul 07, 2011
Dominic DeMarco
And a follow up already:
4) Can members of the public utilizing the PTDLs with access to the DWPI data all over the country use these abstracts or provide them to their paying customers? (7/7 Edit: Not a valid question. Apparently the only USPTO PubWest system with DWPI data is the one in the Public Search Facility on the USPTO campus.)
5) If no financial gain is made through the providing of these abstracts, does that affect the fair usage? What if the likely end purpose is the providing of these abstracts back to the USPTO in conjunction with a PTO-1449 (IDS)? (7/7 Edit: What about an invalidity search that will likely result in an inter partes or ex partes filing with the USPTO? What about an opposition in Europe before an organization that also licenses the DWPI data?)
6) Would this be a good time for some anonymous user log-ins so we could hear an anecdotal story or two?
Dominic
(7/7 Edit: Two weeks later and the sound of crickets is the only answer I've received on the wiki or directly. I've also asked the folks at the USPTO and no answers from them either.
Honestly, all I want to do is clarify what I am legally allowed to do and not allowed to do. Just like many others, I find the DWPI abstracts to be extremely valuable in searching for and understanding entire countries worth of documents, old Soviet patents for example, but those documents are only useful when some of the abstract is also provided to show relevancy. And if clients are going to be providing those documents right back to the organization that paid for the DWPI abstracts in the first place to satisfy their duty to disclose, why should they be prohibited from seeing the abstract in the mean time? Particularly if that organization requires/requests English language abstracts of non-English language documents!)
Mar 03, 2012
Dominic DeMarco
As a good friend and patent attorney said to me this weekend, the plot thickens!
Law Firms are now being sued for subject matter very similar to what I have been asking about. I guess that means the answer to my question "what is the Fair Use of these abstracts? None, a 3 word excerpt, a 10 word excerpt, the whole thing, or we'll tell you in court?" is likely to be "We'll see you in court." See Patently-O for a summary of what is happening: Link.
The USPTO never directly replied to me even though I bothered them through numerous channels (none an official PIUG channel), but they did post a rather pointed Fair Use statement eventually on January 19, 2012 which is here on the Wiki thanks to the Coalition information dissemination project: Link and also on the USPTO website at: Link.
I'm certainly not going to make any ill-informed comments on what any of us (in-house, outside contractors, database providers, etc.) should be doing to avoid copyright infringement issues, but I will say that now is probably a very good time to review your official policies and put in writing (and practice) explicit procedures that will not put you and/or your employer in harms way. If a law firm like MBHB, staffed by dozens of high-end IP attorneys, have practices that make them a target for a copyright infringement suit, I imagine we mere mortals really need to be careful.
Dominic