Re: Best Mode v. Copyright

From: JUDITH <JSZEPESI[_at_]SCUACC.SCU.EDU>
Date: Thu, 12 Sep 1996 17:34:46 -0700 (PDT)

---

> I'm curious if anyone on either the patent or copyright list has
> considered the following dilema?
>
> For a variety of reasons, in particular best mode requirements, many
> practitioners routinely submit code listings with their patent
> applications involving computer-related inventions.
>
> Query: Whether registered or not, the code is copyrighted. Therefore,
> upon expiration of any patent(s) which may issue, since the copyright
> term is semi-infinitely longer, how can the software listing satisfy
> the best mode requirement since the copyright prevents one skilled in
> the art from practicing the invention??
>
> --
> Bruce M. Bertram <URL:mailto:bmb[_at_]bmb.com> finger for public key
> Patent Attorney <URL:http://www.bmb.com/~bmb/>
> 646 Hyde Park Drive <URL:voice:408-739-9062>
> Sunnyvale, CA 94087 <URL:fax:408-739-9413>

Actually, having the code copyrighted does not prevent anyone from practicing the invention. Generally the invention is defined in claims which are much broader than the actual implementation shown in the code listing. Of course, if the code listing is the only way to practice the invention the copyright is invalid because of merger. But as a general rule, there should be a large number of alternative methods to achieve the same result as taught in the patent. By the way, the copyrighting of parts of patents was recognized by the PTO in the Manual of Patent Examining Procedure (MPEP 608.01v) based on 37 CFR 1.71 which applies to copyright and mask work notices.

Judith Szepesi
jszepesi[_at_]scuacc.scu.edu Received on Fri Sep 13 1996 - 00:40:03 GMT