Non-Patent Literature, Fair Use, and the USPTO

Author: Emily R. Florio
Editor: Stephanie M. Sanders

Copyrights and patents are two distinct types of intellectual property rights. Though copyrights and patents provide different types of IP protection, the two can intersect during patent prosecution. For example, an applicant may need to cite references to the USPTO in order to comply with the duty of disclosure. Such references may include U.S. or foreign patents and published patent applications, as well as publications, which are called non-patent literature (NPL) documents. NPL documents can be journal or magazine articles, technical reports, industry standards, dissertations or theses, product inserts, books, conference posters, and anything else that is not a patent or published patent application.

It is likely that a given NPL document will be copyrighted material. In order to be sure that submitting a copyrighted NPL document to the USPTO does not run afoul of copyright law, an applicant must ask whether the submission is considered fair use. The USPTO directly addresses this question—and provides some guidance to applicants—in its memorandum, USPTO Position on Fair Use of Copies of NPL Made in Patent Examination, dated January 19, 2012. The memorandum concludes that if an NPL document is obtained through “legitimate, licensed databases,” then the submission of that NPL document to the USPTO is considered fair use. In order to ensure that you are accessing documents from “legitimate, licensed databases,” you might want to speak with a law librarian.


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