Copyright on the content of patents and in the context of patent prosecution

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The copyright status of the content of patent applications and patents may vary from one legal system to another. Whether scientific literature can be freely copied for the purpose of patent prosecution is also a matter for discussion.

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Copyright status of the content of patent applications and patents

Germany

In Germany, published patents can be freely copied so long as they are correctly cited, and the copies do not alter the patent contents. [1]

Switzerland

Swiss copyright law expressly exempts patent documents from copyright protection. [2] [3]

United Kingdom

Prior to 1 August 1989, the contents of patents filed in the United Kingdom were protected under crown copyright; however, the government declared in 1969 that it did not intend to enforce its copyright under "normal circumstances". [4] Copyright on patents filed since that date lies with the applicants. There is an exemption allowing patent contents to be reproduced for the purpose of "disseminating information", but other uses are prohibited without a license from the copyright holder. [4]

United States

The website of the United States Patent and Trademark Office states that "the text and drawings of a patent are typically not subject to copyright restrictions," [5] and similar views have been published by patent attorneys. [6] As one unpublished academic working paper on the topic of copyright application to patents notes, however, there is no law exempting U.S. patents from copyright, but there is also almost no published literature or case law on the topic. [2]

According to the Compendium of U.S. Copyright Office Practices, the U.S. Copyright Office may register a claim to copyright in a patent or a patent application, provided that the work contains a sufficient amount of original authorship. [2] [7] The copyrighted work might consist of the written description for an invention or the drawings or photographs contained in the patent. [7] Likewise, the Office may register a claim to copyright in articles, publications, or other non-patent literature that may be submitted with a patent application. [7] However, as with any other copyrighted work, the copyright in a patent, a patent application, or non-patent literature does not extend to any "idea, procedure, process, system, method of operation, concept, principle, or discovery" that may be disclosed in these works. 17 U.S.C. § 102(b). [7] [8]

A patent applicant may include a copyright notice or mask work notice, but only if it also includes the following authorization, expressly permitting the reproduction of the patent: [9]

A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all (copyright or mask work) rights whatsoever.

Notably, the copyright notice itself is optional, and there is no requirement that the authorization be included in the absence of such a notice. [2]

United States

A related, but different, issue is whether copyrighted scientific literature, sometimes referred to as "non-patent literature" (NPL), can be freely copied for submission to the USPTO and more generally in the context of patent prosecution. The official position of the USPTO is that providing copies of non-patent literature to the USPTO for the purposes of patent prosecution is protected fair use provided that the applicant obtained the copies properly. [10] In 2012, two lawsuits were brought challenging this practice. [11] Both lawsuits were dismissed based on findings that submitting articles to USPTO and making limited copies of them for those purposes was a fair use. [12]

Related Research Articles

A patent examiner is an employee, usually a civil servant with a scientific or engineering background, working at a patent office.

Under United States patent law, a continuing patent application is a patent application that follows, and claims priority to, an earlier-filed patent application. A continuing patent application may be one of three types: a continuation, divisional, or continuation-in-part. Although continuation and continuation-in-part applications are generally available in the U.S. only, divisional patent applications are also available in other countries, as such availability is required under Article 4G of the Paris Convention.

The Trilateral Patent Offices, or simply the Trilateral Offices, are the European Patent Office (EPO), the Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO). In 1983, these patent offices set up a programme of co-operation in an effort to "improve efficiency of the global patent system".

Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. Broadly, patent prosecution can be split into pre-grant prosecution, which involves arguing before, and sometimes negotiation with, a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.

<span class="mw-page-title-main">Design patent</span> US Patent Law

In the United States, a design patent is a form of legal protection granted to the ornamental design of an article of manufacture. Design patents are a type of industrial design right. Ornamental designs of jewelry, furniture, beverage containers and computer icons are examples of objects that are covered by design patents.

Under United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office (USPTO), that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year. There is no such thing as a "provisional patent".

The Manual of Patent Examining Procedure (MPEP) is published by the United States Patent and Trademark Office (USPTO) for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be followed in the examination of U.S. patent applications, and articulates their application to an enormous variety of different situations. The MPEP is based on Title 37 of the Code of Federal Regulations, which derives its authority from Title 35 of the United States Code, as well as on case law arising under those titles. The first version of the MPEP was published in 1920 by the Patent and Trademark Office Society.

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

In the United States, an Office action is a document written by an examiner in a patent or trademark examination procedure and mailed to an applicant for a patent or trademark. The expression is used in many jurisdictions.

In order to be registered as a patent agent or patent attorney in the United States, one must pass the United States Patent and Trademark Office (USPTO) registration examination, officially called the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office and known informally as the patent bar.

An information disclosure statement refers to a submission of relevant background art or information to the United States Patent and Trademark Office (USPTO) by an applicant for a patent during the patent prosecution process. There is a duty on all patent applicants to disclose relevant art or background information that the applicant is aware of and that may be relevant to the patentability of the applicant's invention, as established by the United States Code title 35 and related sections of 37 CFR and the Manual of Patent Examining Procedure (MPEP). If a patent applicant, with deceptive intent for art known to the applicant, fails to submit material prior art to the USPTO, then any patent that later issues from the patent application may be declared unenforceable because of inequitable conduct. Furthermore, the duty to submit such relevant information to the USPTO lies not only on the applicant or inventor, but also on any patent attorney or other legal staff employed by the applicant.

Title 35 of the United States Code is a title of United States Code regarding patent law. The sections of Title 35 govern all aspects of patent law in the United States. There are currently 37 chapters, which include 376 sections, in Title 35.

<span class="mw-page-title-main">Trademark</span> Trade identifier of products or services

A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies a product or service from a particular source and distinguishes it from others. A trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. Trademarks used to identify services are sometimes called service marks.

<span class="mw-page-title-main">Intellectual property in Iran</span>

Iran is a member of the WIPO since 2001 and has acceded to several WIPO intellectual property treaties. Iran joined the Convention for the Protection of Industrial Property in 1959. In December 2003 Iran became a party to the Madrid Agreement and the Madrid Protocol for the International Registration of Marks. In 2005 Iran joined the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, which ensures the protection of geographical names associated with products. As at February 2008 Iran had yet to accede to The Hague Agreement for the Protection of Industrial Designs.

The copyright status of works produced by the governments of states, territories, and municipalities in the United States varies. Copyright law is federal in the United States. Federal law expressly denies U.S. copyright protection to two types of government works: works of the U.S. federal government itself, and all edicts of any government regardless of level or whether or not foreign. Other than addressing these "edicts of government", U.S. federal law does not address copyrights of U.S. state and local government.

<span class="mw-page-title-main">Outline of patents</span> Overview of and topical guide to patents

The following outline is provided as an overview of and topical guide to patents:

Registration of intellectual property in Ghana is key to safeguarding one's intellectual efforts from infringement. Intellectual property law of Ghana encompasses intellectual property (IP) laws in Ghana, such as laws governing copyright, patent, trademark, industrial design rights, and unfair competition. The main intellectual property laws in Ghana include the Copyright Act, 2005, the Patents Act, 2003, the Trademarks Act, 2004, the Industrial Designs Act, 2003 and the Protection Against Unfair Competition Act, 2000. These are supplemented by regulations passed by the Legislature to augment the rate of development under IP laws.

<span class="mw-page-title-main">Copyright Act of 1870</span> Former United States law

The Copyright Act of 1870, also called the Patent Act of 1870 and the Trade Mark Act of 1870, was a revision to United States intellectual property law, covering copyrights and patents. Eight sections of the bill, sometimes called the Trade Mark Act of 1870, introduced trademarks to United States federal law, although that portion was later deemed unconstitutional after the Trade-Mark Cases.

Patent Application Information Retrieval (PAIR) is an online service provided by the United States Patent and Trademark Office to allow users to see the prosecution histories of United States patents and patent applications and obtain copies of documents filed therein. There are two services: Public PAIR, which allows the general public to access information regarding patents and published applications; and Private PAIR, which allows authorized persons to access information regarding applications regardless of publication status.

References

  1. ↑ "Patents FAQ". Deutsches Patent- und Markenamt. 16 February 2018. Retrieved 17 February 2018.
  2. 1 2 3 4 Alderucci, D. "The surprising consequences of exempting patents from copyright protection" (PDF). Archived from the original (PDF) on 4 March 2016. Retrieved April 24, 2022. The literature has not yet addressed the extent of copyright protection for the type of legal document analyzed in this paper: patent documents.
  3. ↑ "CC 231.1 Federal Act of 9 October 1992 on Copyright and Related Rights (Copyright Act, CopA)". Swiss Federal Council. 1 January 2011. Retrieved 4 August 2015.
  4. 1 2 "Am I allowed to copy patent specifications?". Intellectual Property Office. 17 February 2009. Archived from the original on 3 June 2014.
  5. ↑ Terms of Use for USPTO websites
  6. ↑ Jester, Michael H. (2004). Jester, Michael, Patents and Trademarks Plain & Simple, Career Press 2004, p 65. Career Press. ISBN   9781564147288. Archived from the original on 2014-07-05. Retrieved 2016-10-27.
  7. 1 2 3 4 "Patents, Patent Applications, and Non-Patent Literature". Compendium of U.S. Copyright Office Practices § 717.3 (3d ed. 2014) (PDF). United States Copyright Office. p. 31. Archived from the original (PDF) on 25 September 2014. Retrieved 22 August 2015.
  8. ↑ PD-icon.svg One or more of the preceding sentences incorporates text from this source, which is in the public domain : Compendium of U.S. Copyright Office Practices(3d ed. 2014).
  9. ↑ INCLUSION OF COPYRIGHT OR MASK WORK NOTICE IN PATENTS, MPEP 608.01(e)
  10. ↑ Bernard J. Knight, Jr., General counsel of the USPTO, "USPTO Position on Fair Use Copies of NPL Made in Patent Examination", USPTO Memorandum, 19 January 2012.
  11. ↑ Crouch, Dennis (March 2, 2012). "Copyright: Lawfirms Sued for Submitting Prior Art to the USPTO". PatentlyO blog. Retrieved March 3, 2012..
  12. ↑ Donahue, Bill (January 29, 2015). "Copyright Case Targeting Patent Attys Ends With Settlement". Law360. LexisNexis. Retrieved June 13, 2012..
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