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[boozerker]

If you hire someone to do a set of drawings for a patent, do they get copyright protection on each?

Also, would other random people have to get permission to display the section of the patent containing the drawings?

[Simpletown]

Depends on if you had a contract, what the contract stated, and what country the work was done in. In the U.S. and Canada "work for hire" images are normally owned by the person who paid for the work. Though if you hired an outside person or contractor to make the images the waters can get muddied a little.

[Yak]

I believe drawings in patents are usually not subject to copyright. Sometimes they are, but the patent application has to have a notice in the specification of the copyright claim.  Look at the second paragraph of US 5,715,314 for an example. 

According to the USPTO, patents are published as part of the terms of granting the patent to the inventor. Subject to limited exceptions reflected in 37 CFR 1.71(d) & (e) and 1.84(s) , the text and drawings of a patent are typically not subject to copyright restrictions. The inventors' right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States for a limited time is not compromised by the publication of the description of the invention. In other words, the fact that a patent's description may have been published without copyright restrictions does not give you permission to manufacture or use the invention without permission from the inventor during the active life of the patent.

37 CFR 1.71 relates to the specification
(d) A copyright or mask work notice may be placed in a design or utility patent application adjacent to copyright and mask work material contained therein. The notice may appear at any appropriate portion of the patent application disclosure. For notices in drawings, see § 1.84(s). The content of the notice must be limited to only those elements provided for by law. For example, "©1983 John Doe"(17 U.S.C. 401) and "*M* John Doe" (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in paragraph (e) of this section is included at the beginning (preferably as the first paragraph) of the specification.

37 CFR 1.84 relates to drawings
(s) Copyright or Mask Work Notice. A copyright or mask work notice may appear in the drawing, but must be placed within the sight of the drawing immediately below the figure representing the copyright or mask work material and be limited to letters having a print size of.32 cm. to.64 cm. (1/8 to 1/4 inches) high. The content of the notice must be limited to only those elements provided for by law. For example, " ©1983 John Doe" (17 U.S.C. 401) and "*M* John Doe" (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in § 1.71(e) is included at the beginning (preferably as the first paragraph) of the specification.

[JimIvey]

I'm tempted to move this topic to copyright, though Yak's post points out that there are special considerations in patents.

One thing that a copyright owner cannot prevent is free copying of patents and published applications.  Anyone and everyone is free to copy US patents for whatever purpose.

However, I believe a legit consideration is whether you can reuse the same drawings to produce additional applications or to use the drawings in other publications.  I've been surprised to see my patent drawings in client's marketing materials from time to time.  I'm okay with it, but I've got to believe there are better marketing drawings than patent drawings -- they should at least take the numbers off and annotate things.

I think it's also legit to consider whether copying portions of another's patent in drafting your own application -- as a derivative work -- is copyright infringement.  That is something I don't know.

And, as Simpletown correctly notes, you should always specify who owns what rights in a contract -- particularly with copyrights.

Regards.

[klaviernista]

I'm tempted to move this topic to copyright, though Klav'sYak's post points out that there are special considerations in patents.

Fixed for you. 

[JimIvey]

Fixed for you. 

Oops.  Sorry, Yak.  Thanks, Klav.

[NJ Patent1]

"I think it's also legit to consider whether copying portions of another's patent in drafting your own application -- as a derivative work -- is copyright infringement.  That is something I don't know"

Jim; I don't "know" either.  But I've taken the position in a different thread that there is no infringement.  First, my work, any attorney's work - figures and all - are IMO bought and paid for by the client.  She owns it lock, stock, and barrel.  If I need a "writing" to establish "work for hire", I'd say the engagement letter, interepreted under the Rules of Professional Conduct of my state, should suffice.  And, as I believe you alluded to, a patent is a public document in which the US clams no (c).  Consider if you will "incorporation by reference".  The Office can require that I incorporate, ipsis verbis, bleeding chunks from that issued patent or published app that I've incorporated (not that I frequently incorporate by reference).  I haven't just sampled a recording, I've taken expression of something I need for written description or enablement.

[Isaac]

She owns it lock, stock, and barrel.  If I need a "writing" to establish "work for hire", I'd say the engagement letter, interepreted under the Rules of Professional Conduct of my state, should suffice.

In my opinion your client neither has, nor needs ownership of the drawings.   I sincerely doubt that your engagement letter says or implies anything about transferring copyright to the client.   If it did, the attorney would find it necessary to get those rights when he contracts out drawings, and nobody does that.  The attorney and his firm generally owns the copyright in as much of the drawings and text of a patent application as the attorney authors.

Now I would agree that ethically considerations limit the situations in which the attorney could enforce the copyright against a client, but I would not suggest that there are no such situations.   Also, PTO rules and policy limit the situations in which the copyright holder, be it the attorney or his client, can enforce the copyright against the public.
 

  The Office can require that I incorporate, ipsis verbis, bleeding chunks from that issued patent or published app that I've incorporated (not that I frequently incorporate by reference).  I haven't just sampled a recording, I've taken expression of something I need for written description or enablement.

It would never be mandatory to import expression word for word.  You do that because it is simplest and cheapest.

[JimIvey]

First, my work, any attorney's work - figures and all - are IMO bought and paid for by the client.  She owns it lock, stock, and barrel.  If I need a "writing" to establish "work for hire", I'd say the engagement letter, interepreted under the Rules of Professional Conduct of my state, should suffice. 

Well, that's usually not sufficient under the "work for hire" doctrine.  The attorney is clearly not an employee and, unless the agreement letter explicitly specifies that copyright in all papers produced by the attorney belong to the client, the copyright would ordinarily remain with the attorney.  If there are laws controlling works of attorneys specifically, I'm not aware of them.

Here's a scenario to consider.  Suppose you estimate $10,000 for a complex application.  Suppose you're generous and accept only a 25% to go forward.  Suppose the client takes the completed draft to another attorney and has them file the application for a few hundred and fees, firing you and refusing to pay any more than the $2,500 you've already received.

Has the client or the other attorney improperly copied your copyrighted work?

FWIW, I'm not sure there should be copyright or any protection in that situation.  What if the client refuses to pay you but insists that you file the application before a bar date?  My understanding is that our ethical obligation is to file the papers by any known deadline but not to pay fees.  Perhaps there's no solution for us.  But I wouldn't so quickly dismiss copyright protection of some sort.

Regards.

[NJ Patent1]

Jim/Isaac: Maybe I'm ueberethical, but I'd "read into" the engagement letter whatever was necessary to make-out  a work for hire, assuming both parties "performed" (in my analysis an important point).  I'm more than an employee, I'm a hired gunslinger - hitman.  Without further research, I conceed that there can be a legal difference btw ownership of a (copy)right and ability to enforce that right and, in interest of analytical purity/correctness, it may be important to separate the two.  But a right w/o remedy ... ?  Anyway, it remains my personal view that the client owns what was bought and paid for.  That seques into Jim's hypo scenario.

I might proceed in tort law for "theft of legal services".  But unless client sued ME, I might be hamstrung wrt what I could ethically disclose.   But suing a client under any cause of action?   Hmm.  How do I get my earned fee in this scenario?  May need to revise that engagement letter.

Isaac:  I've been twice "required" by an Examiner to amend a spec to put-in those bleeding chunks to satisfy WD or enablement.  Indeed, I did it bcs it was one of a couple of "formalities" standing betwen me and a Notice of Allowance.  Looking at 37 CFR 1.57(f), it appears U have a valid point.  Reads "permissive" not "mandatory" to me.  Thanks.  Guess I couldn't claim a "necessity" defense to a (IMO bogus) (C)-infringement claim.  But I might win on S/J bcs IMO that patent I "copied" bleeding chunks from is a public document.   

[Isaac]

But I might win on S/J bcs IMO that patent I "copied" bleeding chunks from is a public document.   

My point is that bodily incorporation will never require copyright infringement.  You can avoid infringement by copying small amounts without stealing the essence, by copying only unprotected expression (e.g. expression merged with the idea), by using different expression to copy the same facts, by getting permission, fair use, etc.

But what you'll probably do instead is just copy with impunity.  The PTO does not care because they believe that the expression is not protected by copyright.

[qs]but I'd "read into" the engagement letter whatever was necessary to make-out  a work for hire, assuming both [/qs]

So how do you transfer the ownership of the drawings to the client when Bob's Patents and Tattoos still owns that copyright?

[NJ Patent1]

"So how do you transfer the ownership of the drawings to the client when Bob's Patents and Tattoos still owns that copyright?"

Isaac:  A very good question, and perhaps the reason behind an observation in Jim’s post from 11/16:  “I've been surprised to see my patent drawings in client's marketing materials from time to time.  I'm okay with it, but I've got to believe there are better marketing drawings than patent drawings.”  Using the drawings from the issued patent may skirt any potential issue?

Might an answer be found in your post: “ …by copying only unprotected expression (e.g. expression merged with the idea) …” ?

We have figures in patents because they are required, or at least helpful, to understand the invention.  Do patent drawings “merge” idea (invention) and “expression”, especially if the “drawing” is, e.g., a flow-chart for a computer implemented invention?  “A picture is worth a thousand words”  Just a thought.  Been a LONG time since I even thought about  Baker or sec. 102(b). 

[JimIvey]

Anyway, it remains my personal view that the client owns what was bought and paid for. 

It's good that you recognize that as your own personal view and not the state of the law.  I agree that there may be special considerations for the legal profession as its carefully regulated.  However, "work for hire" does not hinge on whether payment has been made.

Regards.

[Isaac]

It's good that you recognize that as your own personal view and not the state of the law.  I agree that there may be special considerations for the legal profession as its carefully regulated.  However, "work for hire" does not hinge on whether payment has been made.

"Work for hire" certainly hinge on whether payment is made would if I drafted the contract.   Note:  I wouldn't draft such a contract to cover work I did drafting a patent application or other legal document.

[JimIvey]

"Work for hire" certainly hinge on whether payment is made would if I drafted the contract.

Precisely, sort of.  Copyright ownership depends entirely upon the contract. 

"Work for hire" technically requires no contract and supersedes any contract but only in a very specific situation that is not in play for a typical, non-employee attorney-client relationship.  In other words, "work for hire" (copyright transfer through employment) and copyright transfer through contract are mutually exclusive.

Regards.