Copyrighting Your Patent?

by Dennis Crouch

Although it sounds of a malformed naive question, at times patent applicants do want to copyright their patent.  The patent application may, for instance, include software code, prose, or particular schematics that would seemingly be amenable to copyright protection.

In 1987, the USPTO created an official policy allowing patentees to include a “Copyright or Mask Work Notice in Patents” in order to “protect the various intellectual property rights of the author or inventor.”  Those instructions were then codified in 37 C.F.R. 1.71(d)-(e)(1988).  The rule requires that a copyright notice be accompanied with with a grant of permission to make certain copies:

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.

See also, MPEP 608(w).

Unfortunately, neither the rule nor statute provide any indication of the impact of a notice failure.

Published works are no longer required to include any copyright notice, and the PTO has never indicated (AFAIK) that submission without the copyright notice constitutes a waiver or abandonment of copyright protections.  However, the failure to include a (c) notice could potentially be relevant to fair-use analysis.

Santa Clara Copyright Law Professor Tyler Ochoa pointed me to Korzybski v. Underwood & Underwood, 36 F.2d 727 (2d Cir. 1929).  In that 75 year old case, the appellate panel held that a patent filing served as a dedication of all rights in the disclosure to the public domain.

When Korzybski filed his application and received his patent, he . . . dedicated it to the public, save for the right to make, use, and vend it during the period for which the patent gave him that monopoly. The public had the right to the information disclosed in his patent and the right to use and copy the text and diagrams. . . . Everything disclosed in the patent became a part of the public domain.

. . . The defendant has done no more than photograph the [patented] anthropometer. This we hold it had a right to do, because the anthropometer was an embodiment of the drawings of the patent. The copyright was invalid, because the subject-matter had become a part of the public domain when complainant filed the prior application which resulted in the grant of his patent.

An inventor who has applied for and obtained a patent cannot extend his monopoly by taking out a copyright.

The Korzybski decision is based two distinct doctrines – failure of formalities (no longer the law) and improper extension both the failure of notice (no longer the law) and the traditional judge-made public policy that copyrights should not be used to extent patent rights (likely still the law).

I wanted to look at the number of patents that actually include the copyright notice and how that number has changed over time.  The first chart shows the number of patents issued each year containing the copyright notice and the second chart provides charts the numbers as a percentage relative to the total patents issued each year.

PatentsClaimingCopyright

PatentsClaimingCopyrightPercent
Although the relative percentage has changed over time, it has always remained under 1%.  My basic explanation for the percentage being so low is that the copyright notice requires an express waiver of certain rights – why do that without some justifiable gains?

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

15 thoughts on “Copyrighting Your Patent?

  1. This appears to be an unsettled point. MPEP 1512 states:

    “There is an area of overlap between Copyright and Design Patent Statutes where an author/inventor can secure both a Copyright and a Design Patent. Thus, an ornamental design may be copyrighted as a work of art and may also be the subject matter of a Design Patent. The author/inventor may not be required to elect between securing a copyright or a design patent. See In re Yardley, 493 F. 2d 1389, 181 USPQ 331 (CCPA 1974). In Mazer v. Stein, 347 U.S. 201, 100 USPQ 325 (U.S. 1954), the Supreme Court noted the election of protection doctrine but did not express any view on it since a Design Patent had been secured in the case and the issue was not before the Court.”

    There doesn’t appear to be any Fed. Cir. or SCOTUS case exactly on point.

  2. The real takeaway is that there is little or no expressive content in a patent application that would need or merit protection anyway. So nobody bothers.

  3. The folks at the patent drawing company I use were surprised at my apparently novel request that they execute an assignment of their copyright interest in the design patent drawings that they created for my clients, to my clients. They graciously complied, so if my client then chooses to put a formal copyright notice on the filed drawings, and/or file a copyright application for the drawings, my client is, in fact, the copyright owner (claimant) of those drawings.

    37 CFR 1.71(d)-(e) – “John Doe” has to be the copyright claimant, which is the “author” unless the author has assigned or previously contracted all of its rights in the drawings to the claimant.

  4. Even if the Korzybski opinion were still good law, publication of applications didn’t exist back then. So the argument that you’re giving away your copyrights in return for a patent doesn’t hold in the case where a patent application has been published but a patent doesn’t ultimately issue.

  5. Behind this famous lawsuit was a remarkable background story, a nationwide missing person case that made national headlines and threatened to sully Korzybski’s good name and reputation. You can read he entire story of the case and Korzybski’s subsequent lawsuit in Korzybski: A Biography. Click here to read Chapter 32 – Trial-By-Headline in the free online edition of the book: link to korzybskifiles.blogspot.com

    link to amazon.com

  6. However, the failure to include a (c) notice could potentially be relevant to fair-use analysis.

    I disagree. Slapping additional notice on a potentially copyrighted work does not diminish the fair use rights of the public (see, e.g., the NFL’s overbroad prohibitions on fair use of their copyrighted material), no matter how much they wish it would. It’s not part of any of the four fair use factors.

    37 CFR 1.71(d)-(e) recognizes the fact that while an applicant holds a copyright in the documents of their patent application, the public’s interest in full public disclosure of patents places that public disclosure squarely within the realms of fair use. Rather than allow applicants to place NFL-esque “all rights (including fair use rights) reserved” notices on patent documents, which doesn’t square with the actual scope of copyright, the rule allows them to mark their documents with a reasonable copyright notice in order to prevent a potential infringer from arguing that their infringement was not willful.

    As for the scope of the copyright that extends beyond what is covered by fair use, one example would be a computer program published in the patent documents. A third party that copied that program verbatim, compiled it, and sold it as their own would certainly have a tough time arguing that such use is fair. So the copyright notice is not pointless, but it also doesn’t carry the sort of weight that is hoped for by most people who bother to include the notice in the first place.

    1. but it also doesn’t carry the sort of weight that is hoped for by most people who bother to include the notice in the first place

      And what exactly would that be? Given the ultra-low numbers here, and the lack of any other data, how “big” of an issue are you assuming this to be Apotu? (and how are you coming up with your assumptions?)

    2. Re: A plurality of thresholding units

      17 U.S.C. § 401 . Notice of copyright: Visually perceptible copies

      (d) Evidentiary Weight of Notice. — If a notice of copyright in the form and position specified by this section appears on the published copy or copies to which a defendant in a copyright infringement suit had access, then no weight shall be given to such a defendant’s interposition of a defense based on innocent infringement in mitigation of actual or statutory damages, except as provided in the last sentence of section 504(c)(2)[Librarians exception and NPR exception].

      Aka a willfully infringing defendant proffered evidence on mitigation is given no weight for mitigation of damages.

      While the section only excludes such evidence on defenses for mitigation of actual or statutory damages, I can see a court using the willfulness of the infringement under its fair use analysis.

      Particularly at:
      17 U.S.C. § 107 Limitations on exclusive rights: Fair use
      (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

      It probably would be improper. But fair use is hazy.

  7. A graph of issued design patents with such a notice would be interesting to see.

  8. Merely fyi, from the IPBiz post

    — Ropes & Gray: copying patents legal and ethical? —

    from


    DAVID PRESSMAN, PATENT IT YOURSELF 181 (13th ed. 2008) (sold in the PTO’s store and
    relied on by many practitioners) (“If you see any prior-art patent whose specification contains
    words, descriptions, and/or drawing figures that you can use in your application, feel free to
    plagiarize! Patents are not covered by copyright and it’s considered perfectly legal and ethical
    to make use of them.”) (emphasis added).

  9. Most people learning patent law and copyright law (as well as trademark law**) today recognize that overlap is possible based on the different aspects of the item for which protection is sought.

    This is one of the more obvious failings of the anti-software patent mantra.

    When one recognizes the nuance that the different laws protect different aspects, this becomes a rather straightforward topic.

    **think flexible standing traffic signs

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