Sunday 11 October 2009

Understanding Copyright in Patent Prosecution

One of the biggest problems the governments of the world have in designing copyright laws is making their scope well understood to those who are subject to them. This means keeping it simple. Members of the public need to know when they can copy and when they can not.

You would expect specialist IP practitioners, such as patent agents, to understand how copyright impacts their everyday work.

Sadly the Berne Convention does not prescribe every potential limitation on the scope of copyright, although it does sanction certain free uses that countries may cover in their national legislation. In English law, Copyright is not infringed by anything done for the purposes of judicial proceedings (s45(1) CDPA 1988). So what are judicial proceedings? They are a minor definition in s178 and include proceedings before any court, tribunal or person having authority to decide any matter affecting a person’s legal rights or liabilities. Since the Patent Office or Intellectual Property Office (IPO) affects a person's legal rights when it grants or refuses a patent application, it can copy and communicate copyright material to the public with impunity. However it is arguable whether this exception covers what goes on in the Attorney's office. The practice of the IPO and EPO of offering, for a fee, to provide extra copies of citations suggests that they think we do not enjoy this exemption. It may even be why the IPO oddly posts two copies of their search and exam reports.

During the Gowers review in March 2008, the TMPDF suggested that the IPO was not entitled to publish patent files online, as the EPO and USPTO do, because the copyright exemption under s47 for publication does not extend to the making available right (s 20 as amended).

Neither the Crown, the IPO nor any patent applicant has, to my knowledge, ever objected to the making available (in due time) of their files by asserting copyright. If this ever happened the defendant would claim an implied licence to copy. However, once we rely on an unwritten implied licence, how can we expect a teenage downloader to comprehend the law.

The problem lies in the broad coverage of copyright. It seems that everything has copyright. Perhaps it is time to raise the bar and eliminate copyright from the fields where it does not belong and give it back to artists and authors who need it to live off. Lawyers and businessmen can monetise their work in more direct ways.

If you wondered why I used the image above to illustrate this article, hover you mouse over it. Maybe The Museum of Modern Art or the artist himself might appreciate that copyright law was not so complicated.


  1. The EPO charge for extra copies of patent documents not because of copyright law but because of expense. If they provided extra copies free they would be even more in debt.

  2. Maybe thats where the EPO is going wrong. If its trying to fill its deficit by citing thin prior art with reduced photocopying costs, there may be big problems to come.

  3. One aspect of copyright that this exposes is the insoluble problem of treating "copyright" as a binary system:
    * It's either copyrightable, and therefore gets the full panoply of exclusivity and rights of the copyright system, regardless of the author's own wishes for the material or the nature of the material; or
    * It's not copyrightable, and its gets nothing... again, regardless of the author's own wishes for the material or the nature of the material

    At a philosophical level, this is a serious problem and good argument against the copyright system.

    At a practical level, this is a serious problem and good argument for the copyright system: The last thing that anyone wants is nuanced decisions about the scope of the kinds of works that are copyrightable, and the particular protections afforded those works and their authors, being made by lawyers. Leaving aside the poor writing skills endemic in the legal profession, do we really want copyright decisions being made by people whose entire profession (at least in common-law countries, and subtly-but-analogously in civil-law countries) is built upon demonstrating that somebody else already said the same thing — that is, it isn't truly creative? I think not. (Exhibit A: Justice Souter's inept Yogi-Berraisms in various copyright decisions, such as trying to distinguish for copyright grounds between "satire" and "parody," or making the first derivative of "direct" into "secondary"... and he's unusually sensitive to the creative world for a judge.)

  4. Filemot,
    I have a doubt; last evening, I blogged on copyright in patent specification on SpicyIP citing the judgment of the High Court of Justice (Chancery Division) in Catnic Components v. Hill & Smith (1978). The Court in this case held that upon publication of the patent specification, the applicant loses copyrights in the specification (and the drawings contained in them). The decision was challenged before the House of Lords which desisted from expressing its view on this point. On the face of it, the Chancery Division's logic seems reasonable since if the patentee exercises his copyright against third parties, after the expiry of the patent, he can prevent them from manufacturing the invention on the ground that 3d reproduction rights of the copyrighted matter vest with the copyright owner. Does this not lead to an unwarranted extension of the term of the patent? Also,if the applicant indeed is the owner of the copyright in the specification, is he entitled to royalties from subscription-based patent search databases such as Delphion?

    J.Sai Deepak.