Re: Best Mode v. Copyright

From: Bruce Hayden <bhayden[_at_]>
Date: Sat, 21 Sep 1996 15:16:30 -0700

JUDITH wrote:
> >
> > 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??

I am not sure how really relevant expiration of the patent is - unless you are assuming that execution of the code will infringe the claims.

> 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.

Luckily, I am able to write most of my software patents without the necessity of supplying code. However, last year we had a situation where we did supply code, and the examiner rejected claims based on enablement. Part of the response was that you could scan or type in the code and execute it. (As a note, I think enablement is probably a better justification than best mode for submitting code).

I believe it was lunch with Mark Lemley when this came up. The point was made that by arguing enablement, we had possibly licensed the copyright to the code. Sort of like a file wrapper implied copyright license (anyway to get trademark in there too?)

I think that Mark really hit it on the head - enablement is more of a problem than best mode because the statute requires that the best mode be disclosed, but the enablement section requires that any person skilled in the art be able to practice the invention. I see no requirement that the best mode be practicable.

>From that, I would suggest that you would perform something akin to
abstraction/filtration/comparison on the copyrighted code to determine exactly how far the copyright, and the implied license extends. (Actually, the more I look at this, the more I wonder whether there would be anything that would be considered nonfunctional but required for enablement, and thus impliedly licensed).

The preceding was not a legal opinion, and is not my employer's.
Original portions Copyright 1996 Bruce E. Hayden, All Rights Reserved
My work may be copied in whole or part, with proper attribution,
as long as the copying is not for commercial gain.
Bruce E. Hayden                                  bhayden[_at_]
Austin, Texas                                    bhayden[_at_]
Received on Sat Sep 21 1996 - 20:18:04 GMT

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