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.

Patent Highway

Isla Furlong, patent attorney at Venner Shipley has been doing some blogging on the CambridgeIP site. I wanted to comment on her piece on the Patent Prosecution Highway which the EPO call the Utilisation Pilot Project.

The whole idea is premised on the assumption that at least some patent applicants don't like the protracted grant procedure. Certainly first-time applicants are usually appalled at the timescales, but they rapidly come to see that delay can have many advantages, not least on the funding requirement.

So much so that I suspect that these highways have little traffic. I took a ride on the EPO/highway recently and was very impressed by the thoroughness of the new search I received. This was a case already accepted in the UK but the EPO were not simply going to use the UK work product. In discussions with some other attorneys, there was some concern that they would lose out on the further search.

When I receive a search opinion. I find it hard to resist diving in to see whether the examiner has a good position or not. I am blessed with clients of similar enthusiasm, which is a bit of a problem in this highway as you can't talk back without stopping to pay at the examination fee toll booth.

I would like to see the Patent Offices offering some incentives to applicants that want to co-operate with them and allowing the examination to continue while the subject is fresh in the mind of both applicant, agent and examiner seems like an efficient thing to do.

I wonder whether patent applicants in general do want speed. Hope is often more attractive and more marketable.

Those impeded by alleged patent risks may, on the other hand, very much prefer their competitor's more ambitious hopes to be dashed quickly so it would be good to have the option of putting them on the highway.