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Suppose person A has some demo code that they would like to include in a patent application for illustrative purposes (please note that this question is not about the wisdom of including code in a patent application per se).

Further suppose some files were initially copied from an MIT or BSD licensed software package, and then subsequently modified by person A for the purposes of the demo project. Person A documented their changes and included the original copyright and licensing information, along with attaching their own copyright to the modifications and a statement to release the modified files under the same license (MIT/BSD) (but not all files in the project are released in this manner).

I know there is a USPTO rule for including code with copyright status that basically requires the applicant to grant a license to the USPTO to make copies. (EDIT: Actually, the license is supposed to allow anyone to make copies, but that doesn't change the nature of the question).

While person A can probably grant such a license with respect to their original work (i.e., the remaining files in the project), I don't think person A can explicitly grant such a license with respect to the modified files without the cooperation of the original authors. Is this not so?

However, I don't know if it's sufficient for the USPTO that the files are MIT or BSD licensed. Is it?

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  • Licensing questions are off topic here. You might try the Law SE site.
    – Eric S
    Dec 18, 2023 at 17:20
  • @EricS In this instance the license is required by the USPTO as part of the patenting process which should be sufficient to make this question on topic. The question is not asking about any other aspect of licensing.
    – bhuff36
    Dec 18, 2023 at 17:42
  • I appreciate that this is a gray area which is why I’m leaving the question up for now. The fact remains that attorneys who know the law about licensing are more likely to be found on Law SE.
    – Eric S
    Dec 18, 2023 at 18:55
  • In what law or rule do you find that requirement ? If the question relates to a requirement for a USPTO application to be considered to be filed it would be on-topic.
    – George White
    Dec 19, 2023 at 0:41
  • @GeorgeWhite 37 CFR 1.71 (d) and (e). If I read these paragraphs correctly, it means that any application that has a copyright notice included and applying to any portion of it must also bear a notice that the copyright owner "... has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure ...". So the question is basically whether it can be legally inferred that a copyright owner that has released their work under the MIT/BSD license automatically has no such objection or a special permission must be obtained, in the context of patent applications.
    – bhuff36
    Dec 19, 2023 at 1:05

1 Answer 1

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AS you say, the content of 37 CFR 1.71 (d) and (e) does make the question on-topic, but it is also on topic at Law SE.

The USPTO rule cited requires that anything marked copyright in an application must also have a notice that the owner has no problem with the patent office making copies of the text or drawing that is protected by copyright. The only condition I see in the MIT license to "copy" is to include their disclaimer in any "substantial" portion. So the owner does not object to copying.

It would probably be off-topic here to get specific on what a substantial portion means in this context; however you could just include the disclaimer.

I do not think this has ever been a problem in a real life situation.

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  • Maybe it's as simple as you say. It does seem to hinge on the definition of objection. If I release a software package under a permissive license and it is used in the firmware of a war machine, I could be in a state of objection to such usage (though I could not legally do anything to stop it).
    – bhuff36
    Dec 19, 2023 at 4:18
  • It seems acceptance of the disclaimer is not a condition for copying under MIT license. One only has to include the disclaimer, not legally accept it as a condition. This will be done automatically by anyone who copies the USPTO file without modification. However it remains that someone who copies must still accept the terms of the license; i.e., enter into a contract of sorts in order to copy. That might not be provided for by (d,e). I think person A would be best served to investigate technological remedies such as providing only a patch file relative to the MIT licensed files.
    – bhuff36
    Dec 19, 2023 at 17:12
  • I do not think this has ever been a problem in actuality.
    – George White
    Dec 19, 2023 at 17:16

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