Tuesday, February 21, 2012

Can You Copyright a Patent?

Dear Rich: I improved an expired invention. When I prepared my provisional patent application I downloaded drawings from the old patent and made a lot of modifications to show how I had improved the original. I'm submitting these drawings as part of my provisional patent application and I'm also citing that patent as prior art and wanted to attach a copy with my application. Here's my question. What if the patent has expired, but the copyright hasn't? Let's sort out a few things first. When you refer to an expired invention, we assume you mean an expired patent, one that's run out of gas because the term is over or the owner failed to pay maintenance fees. In other words, the patent is in the public domain. Second, if it helps to explain your invention, you can include the expired patent with your application (and mention it as prior art). But it's not necessary to provide copies of prior art patents when filing a provisional patent application. As for the drawings, we think you'll be fine but there are a few things to consider.
Copyrighting a patent? It's not uncommon for a patent applicant to use text or drawings from a prior art patent when submitting an application and there have been disputes as to whether a patent’s text or drawings are protected by copyright. The USPTO takes the position that, “Subject to limited exceptions reflected in 37 CFR 1.71(d) and (e) and 1.84(s), the text and drawings of a patent are typically not subject to copyright restrictions.”
What makes the issue somewhat confusing is ... One of the exceptions to the general rule, above, is that patent examiner regulations permit patent applicants to include copyright notices and copyright claims regarding authorship in patent text or drawings. The PTO’s website also states “There are also instances where a portion of the text or drawings of a patent may be under copyright. You should consult an attorney regarding these potential trademark and copyright issues.” And then there's also a 2003 case, Rozenblat v. Sandia Corp. 69 USPQ2d 1474 (7th Cir 2003) in which the Seventh Circuit, acknowledged the copyrightability of an inventor's patent drawings (although ruling against the inventor as to the issue of infringement). Finally, Copyright Office regulations  do not prohibit registration of patent drawings.
What's an inventor to do? As a general rule, the “borrowing” of technical language or drawings is likely to qualify as fair use under copyright law. However, exercise caution if the patent from which you are copying clearly indicates it is protected by copyright—for example the patent includes a statement of copyright ownership or a copyright symbol.
BTW Dept. Last month, the USPTO's General Counsel issued a paper on fair use and non patent literature (NPLs) that must often be furnished as part of the regular patent application. The USPTO concluded, “we believe that it is fair use for an applicant to make copies of NPL and submit those copies to the USPTO during examination in an IDS.”