The drafter of patent applications and their moral right

Recently and during a conversation with Pablo Paz, an expert in patents and one of the speakers in the “III Regional Workshop for the training of trainers in Latin America: Drafting of Patent Applications”, held in Montevideo last September, he raised an interesting issue; whether the drafters of patent applications were entitled to any kind of right, either “copyright” or the moral right to be designated.

It is an attractive topic I had never thought about, and I really appreciate Pablo making this suggestion. Patent drafting is one of the jobs carried out by “Industrial Property Agents” or “Patent Agents”.

The first article of the Spanish Intellectual Property Law states:

Article 1. Generating act

               The intellectual property of a literary, artistic, or scientific work belongs to the author by the mere fact that it has been created.

The first question to be posed would be whether a patent document can be regarded as a literary, scientific or artistic work. This does not seem to be the case. A patent document could be defined as a technical text or a technical specification.

On the other hand, to what extent can the drafter of a patent application be considered its author? Undoubtedly, a good drafter is in charge of a momentous job, which can add commercial value to an invention and among the tasks to be carried out the following ones can be highlighted:

  • Obtaining from the inventor all the relevant information regarding the technical problem to be solved and the invention’s essential technical features for that purpose.
  • Determining the relevant prior art.
  • Establishing the distinguishing technical features, compared to the prior art.
  • Drafting an independent claim as broad as possible that is patentable with regard to the prior art identified, which is not easily “circumvented”, and that facilitates the prosecution of possible infringers.

Likewise, the drafting a good patent application and especially of good claims provides an added value essential to protect the invention and be able to exclude third parties from its commercial exploitation.

I am not aware of any request of moral acknowledgement by drafters of patent applications or by any professional association of patent agents or attorneys of a moral recognition. One can see in the bibliographic data of a patent application that patent agents are included, although with the sole purpose of facilitating contact or with commercial purposes.

Nevertheless, in the USA, always a reference when it comes to patents, the issue of the relationship between patents and copyright was already raised some time ago. The USPTO website states that “the text and drawings of a patent are typically not subject to copyright restrictions”. The USPTO correctly warns that the fact that patent documents are not protected by copyright must not be construed as the subject matter of the document being freely available with no risk of being sued for infringement.

The USPTO also includes on its website an explanatory note indicating that patent applications may include warning that some parts of the text are protected by copyright, but in this case an explicit authorization for the reproduction of the document must be included:

“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.”

Here are some patents which include such a paragraph about “copyright” protection:

WO2008114149 (A2)

US8889146B2

US2019106052A1

It seems that the note can be found in thousands of US patent documents.

  “Copyright” explanatory note in the patent document WO2008/114149 A2

In the Wikipedia entry devoted to this issue, information can be found about three more States: As far as Switzerland and Germany are concerned, patent documents are not protected by copyright. In the United Kingdom patent documents were protected by the so-called “Crown copyright”, which exists in some Commonwealth countries. It seems this right was never enforced. The British Intellectual Property Office has an explanatory note on its web clarifying that patent documents are protected by “copyright” if they are used with the purpose of disseminating information technology but not for others, such as sales or advertising.

Another issue linking patents and “copyright” is that of the relevant documents which are cited in prior art search reports. Those searches are carried out in patent granting procedures all over the world.  It is not unusual that some of those documents cited to show the prior art regarding a certain invention are scientific articles protected by “copyright”, what happens then? The USPTO published a memorandum explaining that the use of those articles is allowed by the so-called “doctrine of fair use”. It also adds that those “copyright” protected articles are not included in PAIR (The prosecution history of patent files).

This entry from blog patentlyo informs about two lawsuits that were held in the USA, as a result of the applicants providing the USPTO with documents that were relevant for the prior art of the invention. Eventually the lawsuits were not successful.

In Spain, the OEPM (Spanish Patent and Trademark Office) warns the applicants, when the Non Patent Literature is delivered, that they must be cautious when handling those articles, which must be used solely for the purpose of knowing the prior art identified by the patent examiner.

Note: Non Patent Literature scientific or technical articles can be subject to copyright or any other type of protection for written works in accordance with current legislation. Texts subject to copyright cannot be neither copied or used in other electronic or printed publications nor redistributed without the express permit by the right holder.

The fact that a significant portion of the prior art is represented by scientific articles protected by copyright is a problem, and gaining access to them can be really onerous.

The prior art search must also take into account the NPL. A recent entry in “patentlyo” warns of the risk that AI-based patent search engines might face if they are trained with data from prior art citations by patent examiners, where NPL is usually scarce, especially in some Patent Offices.

I am afraid that the main question, whether the drafter of a patent application deserves some kind of moral acknowledgment, has not been answered. Since a monetary remuneration is taken for granted, could it not be possible to include some kind of recognition such as “patent application drafted by John Doe”? Anyway all comments are welcome.

Leopoldo Belda Soriano  (With the assistance of Pablo Paz)

En español

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