copyright patents fair-use
Patent application: can the citation of a figure from another author be considered fair use?
<p>I would like to include a figure from a scientific paper which illustrates some background for my invention. I can cite the source and I can make it clear that I'm using it for illustration and discussion purposes only.</p>

<p>Is that a strong case for "fair use" or do I need to be concerned about violating the original author's copyright?</p>

<p>Contrary to what is stated in another answer, the text and drawings of patents can be copyright in the U.S. From the Compendium of U.S. Copyright Office Practices:</p>

<blockquote>
  <p>Patents, Patent Applications, and Non-Patent Literature
  The U.S. Copyright Office may register a claim to copyright in the written description for an
  invention or the drawings or photographs set forth in a patent or a patent application, provided
  that the work contains a sufficient amount of original authorship.</p>
</blockquote>

<p>The patent office requires that you allow reproduction of your patent and patent application but you can conceivably stop people from other uses of text and drawings in your application.</p>

<p>Also contrary to another answer patent applications are published by the USPTO. So the question comes down to the drawing you are planning to reproduce. Presumably you can convey the scientific/technical content the drawing contains in a drawing, data table or other means of expression.</p>

<p>Note that another answer states that you are required "provide prior art and the demonstrate how you are novel relative to all prior art." That is not correct. You <strong>do</strong> need to make the patent office aware of relevant prior art. This is usually done by citing documents on an Information Disclosure Statement. It is not your job to show that your claims are novel - it is only your job to counter the novelty arguments the examiner cites in an office action.</p>

<p>I will only address the legal question asked, about a fair use defense of such copying. I presume that the copyright holder has refused permission to use the figure for free (or perhaps at all), or else the right-holder is uncontactable. If the former, you have a good estimate of the chances of getting sued.</p>

<p>Fair use is determined via a balancing act involving purpose, nature, amount and effect. Purpose ranges from commercial exploitation (on the "not" side) to non-commercial education. Patents exist "to promote the progress of science and useful arts", which is more in line with educational use. W.r.t. "purpose", the uses is more in line with fair use than not (compare that to "make a tee-shirt from it and sell a zillion copies", not fair use). Nature has to do with "what kind of work was the original -- factual versus creative?", and here because this is a scientific paper and you are apparently reporting facts in some form (not copying a Chagall painting), the proposed use favors fair use. Amount refers to the <em>gravitas</em> of the copied part relative to the whole. In a typical scientific paper, a figure is just a summary of certain facts which, while important for the paper, is not the essence of the entire paper. The typical standard for copying a figure adopted by major publishers is that a figure can be copied, and two figures requires permission (their reasoning is informed by prior lawsuits, and is not itself a form of law). Finally, effect regards what market harm your copying did to the copyright holder. It is highly unlikely that the publisher (let's call them Alsavior) will lose millions of dollars from journal subscriptions and access fees because you included a figure from one of their journal articles. It is likely that the effect on market will be near zero. Then there is the fifth factor, "transformativeness", which asks whether you are just copying, or are you creating something entirely new in the course of copying the original – this isn't a "just plain copying" use. So all told, a fair use analysis looks promising.</p>

<p>At the same time, because there are no bright lines and it is a subjective balancing act, one is advised to either avoid the problem entirely (paraphrase, do not copy), or hire a lawyer, or both.</p>
