Re: Best Mode v. Copyright

From: Bruce Bertram <bmb[_at_]>
Date: Tue, 24 Sep 1996 08:04:22 -0700 (PDT)

Bruce Hayden wrote:
> JUDITH wrote:

Actually, I inarticulately posted the original question.  

>> > 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.

No. Prior to expiration of the patent, others are excluded from making, using, selling, importing. Upon expiration of the patent, others may practice the claimed invention. However, to the extent the dislcosed code is really required to enable and/or best mode, others would still need a license to use the code. But, see below ..

>> 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.

Per your comment below, I think this would depend upon at what level of abstraction the invention is found.

> Luckily, I am able to write most of my software patents without the
> necessity of supplying code.

Agree. I think there's a tendency to submit lots of code to CYA. In one case, in which the code was submitted, and the level of invention is clearly (to me, anyway) at a higher level), the Examiner sent an objection re the form of the code, and suggested that the appendices be withdrawn and the code submitted as an IDS. We didn't understand the IDS suggestion, but satisfied the Examiner by submitting microfiche. The implication, however, was that the Examiner did not consider the code necessary for best mode or enablement.

Re your lunch with Prof. Lemely and best mode v. enablement, I recall two different seminars last year at which PTO officials said "send flow charts, not code." In most instances, and again assuming that most inventions are at a level higher than the code, I would contend that given the proper block diagrams, flow charts (or structured, or OO equivalents), a software engineer skilled in the relevant art could practice the invention without the inventor's code.

Just as in discussions re software and copyright, some folks tend to lump things together, failing to recognize the distinction between the expressive and functional aspects, IMVHO on the patent side, folks seem to assume that just because a computer related invention includes some software, that the software is automatically required to satisfy enablement and best mode. In many "hardware" related inventions, block diagrams, perhaps down to the board level are sufficient to satisfy these requirements. Circuit diagrams down to the individual component are not necessary when the invention is at a higher level.

Bruce M. Bertram     <URL:mailto:bmb[_at_]>       finger for public key
Patent Attorney      <URL:>
646 Hyde Park Drive  <URL:voice:408-739-9062>
Sunnyvale, CA 94087  <URL:fax:408-739-9413>
Received on Tue Sep 24 1996 - 15:00:02 GMT

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