I still don't quite know what to make of this.
Let's start by framing the issue in terms of ethics: a lawyer has an obligation to disclose material information to the USPTO under Rule 56 and TheraSense. Sometimes, that may require disclosure, not just of a citation, but of an actual copy of an article or document.
What if submitting a document is required, but doing so violates copyright law?
In Am. Institute of Physics v. Schwegman Lundberg & Woessner, PA, __ F.Supp.2d __ (D. Minn. July 2, 2012), the alleged copyright holder sued the patent firm and contended that filing copies of copyrighted articles violated its copyright. The defendant filed a Rule 12(b)(6) motion. Much of the resulting decision is about pleading requirements post-Twombly, but part of the decision addressed whether "distribution" of the works had occurred:
Finally, Defendants argue that Plaintiffs have failed to adequately plead a public-distribution claim. One of the “bundle of rights” granted under the Copyright Act is the right to “distribute copies . . . of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending.” 17 U.S.C. § 106(3) (emphasis added). The Complaint alleges that Defendants “distribut[ed]” copies of their works “outside of Schwegman” (Compl. ¶ 18), but the only identified recipient of such “distribution” is the PTO. According to Defendants, the PTO is not “the public” under the Copyright Act and, hence, any claim based on their “distribution” to the PTO must fail. (Reply at 6-7.)....
There may be merit to this argument. Some courts have held that a limited distribution to a government agency does not constitute “publication” under the copyright laws....
The problem, however, is that Defendants only casually mentioned this issue in their opening brief, arguing in one sentence – in the midst of the Twombly argument, and without citation to any authority – that “Plaintiffs fail to allege that [the] . . . so-called distributions were made ‘to the public,’ and only public distributions fall within . . . Section 106(3).” (Def. Mem. at 5.) Not until their Reply did Defendants flesh out this argument (over nearly two pages), citing several cases ostensibly supporting it. By not squarely raising this issue in their opening memorandum, the Court believes Plaintiffs did not have an adequate opportunity to address it.
Consequently, the district court denied the defendant's Rule 12(b)(6) motion -- for now.
So, this narrow band of conduct -- submission to the Office -- may not be unlawful conduct, but for now let's suppose it is. Obviously, a lawyer cannot engage in illegal conduct. What does he do when faced with this problem?
The first step may be to narrow the circumstances in which it arises: if filing a copy is not required, don't file one. This could of course cause some delays in prosecution, which may not be in the best interests of the client. But lawyers obviously should avoid unlawful conduct, particularly conduct that could expose the lawyer to liability, and (I would think) the client to copyright liabilty under some sort of agency theory, at least.
The second step would be to disclose. There is no exception to Rule 56 that says material information need not be disclosed if it is subject to copyright. Indeed, even trade secret information must be disclosed if material to patentability, as you know.
The third step would be to hope that (a) courts find that disclosure is not distribution or (b) it is fair use in most instances. I don't know much about copyright law, but my sense from what I do know and from the Schwegman opinion is that the former is likely, and the latter, though an affirmative defense, is also likely. It will hardly reduce demand for scientific articles if you can find them in files in the USPTO if you're lucky enough to find it.
I wonder about the other issues where I see copyrighted material copied, say in patent litigation. Discovery materials are not submitted to a court, but are distributed to private parties. Later, if there's a trial, they are copied and one copy might be used as an exhibit and submitted to a court. What about those? (I ask not rhetorically since, again, I don't know copyright.)