Patenting a novel's plot could deprive users of their rights under the Copyright Act

Andrew Knight, a US novelist and a patent agent, was the first to apply for a patent on the unique plot of his novel. Although the US patent office rejected Knight’s application, the author intends to appeal to the Federal Circuit.

Knight espouses that patent protection is crucial because copyrights are not enough to keep away others from stealing his intricate storyline and free-riding on the ‘rewards of his best work’. In general, copyright law protects expressions of ideas but not the ideas themselves. In this respect, while the material fixation of a novel is clearly protected, its underlining story may not be. Thus, Knight argues that authors need a robust guard against those who try to steal ‘their thunder’.

Authors will not be the only ones who benefit from such a patent. According to Knight, other winners include small media companies who are able to obtain few but unique storyline patents. This will allow them to better compete in the market and garner a larger slice of the pie by offering enforceable licenses to the media giants’. This argument, however, is not cogent. It rests on the assumption that small media companies can afford to invest in a patent of a storyline. In my opinion, this is not the case for several reasons.

Firstly, getting a patent is an expensive process, which individual authors and small entities may not be able to afford. In the US, a relatively simple invention, such as a paper clip, costs between $4,000 and $6,000 to be patented, while a highly complex invention could top $15,000. Furthermore, the process takes between 18 months and a couple of years. Very few small companies can wait that long before they start realizing any profits on a patent investment. Thus, contrary to Knight’s conclusion, a patent on a storyline might only be beneficial to big players in the industry.

More importantly, patenting a storyline could deny important user rights under the Canadian and US Copyright Acts. For example, the Canadian Copyright Act allows a user to utilize a copyrighted work if it is done for the purpose of private research or study, review or criticism, news reporting or education. Such is not the case for patents.  If a storyline is patented, then the owner has a full monopoly on it. Any use of the storyline could be done only through a license or by obtaining the consent of the owner. In this respect, it would be very hard for a user to review or newsreport on a given book without reproducing the underlying storyline. Thus if a protection on a storyline is to be allowed, it should be done through copyright and not patents.

The real issue may therefore be, what can be done to improve our copyright system to ensure that authors are better rewarded and protected, while users and investor concerns are also met.

  1. This is certainly an interesting development. A couple of points:

    – I would tend to disagree that Knight’s argument is not cogent. While patents certainly are expensive for a small company, if plot patents become commonplace and their exploitative value is duly perceived in the investor community, then investor funds will likely be made available to these companies. Indeed, this is much the same way that technology startup companies finance patents now.

    – If plot patents were to pass muster as statutory subject matter, there would be some dramatic implications. Just a few implications off the top of my head: prior art searches would consist of looking at scores (potentially centuries) of literature, movies, dramas, etc.; a standard of obviousness would have to be derived for authors/writers; and movie studios/publishers will have to develop entire patent departments to file plot patents and to defend against demand letters.

    – Perhaps one argument in favor of using patents to protect plots as opposed to copyright (presuming they should be protected at all) is the shorter 20-year life span of a patent. Upon expiration of the patent, all would be free to develop stories based on similar plot line. Considering the long useful life of story lines, this may not be a bad deal for the public after all. Hmmm… maybe it’s time again for a movie like ‘Who framed Roger Rabbit’ (one of the top grossing movies in 1988).

  2. An interesting topic to raise. If authors are indeed not adequately “rewarded and protected”, it may not be primarily the fault of the copyright system but more the lack of adequate regulation of author-publisher contracts in most provinces (Quebec excepted, to some extent). Handing out patents is no answer, I agree. I doubt if any author would want that.
    All of which begs the question of whether this patent application is little more than a publicity ploy for the applicant and his patent agency practice. Is there any real doubt that the application will fail on appeal as it has before the US patent office, and as it would summarily before the European or Canadian patent office were a corresponding application presented there? Quite apart from problems of novelty and unobviousness, is the subject-matter “useful” or constitutionally part of the “useful arts”, which are usually technology related? Is it statutory subject-matter at all – a “manufacture”, “composition of matter”, etc.? (And is it “technology” under TRIPs?) The answer to these questions would have been clear enough when the first US copyright and patent statutes were passed at the end of the 18th century. Has their essence changed in the last 2 centuries? The misleading brocard that “anything under the sun that is made by man” is patentable in the U.S. needs at least the qualification “almost”, and generally analysis of what “made” means in this context. And it doesn’t apply elsewhere, as the Harvard mouse case in Canada and myriad cases in Europe attest.

  3. An update on my earlier comment. My views there are reinforced by a decision of the Federal Circuit en banc, which has just (Oct 30) decided a business method case (Re Bilski), taking a less expansive approach to patentability than its earlier State Street decision. The court (9:3) rejected an application for a method of hedging risk in commodity trades. The case reaffirmed that abstract ideas are unpatentable. A concurrence suggested that the history of the US patent laws, derived as they were from English law and practice up to the 19th century, was not meant to extend patentability beyond that practice. A book plot was never considered patentable in England: it was simply not a new manner of manufacture. Nor is it patentable under the new patentability rules of the European Patent Convention by which the UK has been bound since 1977.

  4. This article raises a creative line of thought, pointing us towards the potential erosion of user rights. However, I do not see the need for concern in this case. Mr. Andrew Knight is unlikely to succeed in his quest.
    Recognizing Mr. Knight’s book via a patent would go against the social policy involved behind this legal device. In return for protecting a patent’s monopoly the public domain is granted access to a useful solution for a practical problem (Patent Act s. 2). A book, however ingenious, is not useful in that sense. It is not a process or a machine which yields a specific beneficial result, such as a seed resistant to a certain type of pesticide (Patent Act s.27 (3)(c) or (3)(d)). It’s true that on appeal, the Court in Canada has a right to probe the Commissioner’s decision thoroughly, waving the usual deference present in questions of fact and law (Par 42 Apotex Inc). However, the inventor has to establish utility either based on a demonstration or the doctrine of sound prediction. Of course, if the sound prediction turns out to be incorrect, the patent is void (Par 46 Apotex Inc).
    Mr. Knight would have a hard time overcoming utility either with demonstration or sound prediction.

  5. I enjoyed your comments!
    FYI, the cases are currently being appealed to the Board of Patent Appeals and Interferences. It will reject them, at which point I’ll appeal to the Federal Circuit. Bilski was interesting, but ultimately helped (not hurt) my chances at patenting certain specific claims (although it might have killed some others). You can read my appeal brief, which is public, at
    Andrew Knight

  6. This has been an interesting debate… and since IP scholars enjoy “balancing competing interests”, I will offer some views in defence of Mr. Knight.

    Firstly, I must note that all patents – on some level – are publicity/marketing ploys. Mr. Knight’s motivations are no less genuine than IBM, or the “sacred” professor in a University laboratory. This is ‘part and parcel’ of the modern patent game.

    Secondly, the overlapping of IP rights – whether it’s copyright & trade-marks, or copyright & patents – is nothing foreign to IP protection. (As Canadian readers may be aware, the painfully intricate decision in Euro-Excellence has recently confirmed this –

    Thirdly, there is nothing that necessarily takes the practical application of a novel* plot beyond the realm of statutory subject matter. (*I don’t mean to equivocate here… but patenting a novel plot, is a novel plot indeed). The Canadian Patent Act already says that “art” is an enumerated category of invention. And the US Patent Act defines “process” (which is an enumerated category of invention) to include “art”.

    Expansions to the notion of ‘invention’ have always been met with skepticism, whether it’s the patenting of life, drugs, business methods, etc.. But there is nothing necessarily inherent to US Patent Law that would take his novel plot outside the categories of invention, especially if we accept that business method patents are growing in acceptance and are patentable.

    Furthermore, would it be more palatable to the USPTO for Mr. Knight to patent his novel plot in the guise of it being some type of (loosely defined) business method? These arbitrary distinctions should not matter when it comes to subject matter eligibility.

    Indeed, I have recently written on the bounds of ‘invention’ in the Richmond Journal of Law & Technology ( And even though I defend the patent application on subject matter eligibility grounds, I still think that the patent application may have some hurdles with respect it being truly ‘novel’ and/or non-obvious. But these are different – albeit allied – issues for another day.

  7. Some points in the last comment merit response.
    First, while overlap of IP rights is possible, in policy terms it is undesirable to multiply incentives without justification. In crude terms, if it takes 100 or more years automatic copyright protection to induce me to write a novel, would I write better or more if I had another concurrent 20 years patent protection? IP statutes do have boundaries and courts in many countries have staked out one statute’s subject-matter boundaries by interpreting them against the protection that another IP statute offers. Patent law is not coincident with copyright law and hasn’t been since patents stopped being granted to printers. To say that copyright and trademarks can overlap is not to say that that they should or that they do; still less for copyright and patents.
    Secondly, to say that “art” could include plotting novels is also not the same as saying that it does. It could also mean Mr Garfunkel’s forename, but it doesn’t. It could also mean Barney Newman’s striped paintings, but it doesn’t. Similarly, “process” could mean what goes inside one’s head; but even the courts have said that mere mental steps are unpatentable. The meaning of a word is coloured by its association with other words, by the context in which it is found, and by the policy the context reveals.
    Thirdly, the US constitution distinguished from the start between “authors and inventors” and their “respective writings and discoveries”; is it implausible that the US IP statutes try to follow the same distinction between authors’ writings and inventors’ discoveries? (The day the mid-19th century Congress tried to stuff trademark statutes under this clause was the day it found out it was no omnipotent in IP matters, as the US Supreme court told it in no uncertain terms in the Trademark Cases.)
    Fourthly, perhaps the US Congress could make plot-making patentable, constitutionally; but the fact that no such US patent has been granted or upheld for two centuries on the current language, despite this “art” being practised in the 18th century and even more so beyond, is some evidence that the subject-matter is beyond the Patent Act’s range. Whether a plot-making computer program would be subject-matter now in the US after Bilski is an interesting question; it probably would not be in Europe. In policy terms, does this activity need incentives? If not, legislators are just creating deadweight social costs; and one may interpret statutes with such considerations in mind.
    Fifthly, I have tried to avoid mingling the “is” with the “ought”, but all IP legislation has to be interpreted purposively. That requires asking whether the protection of a particular subject-matter furthers the perceived policy of the statute involved. Nothing said so far has indicated what problem the patenting of plot novels is a solution for, that is not fully covered by copyright protection or, until publication, breach of confidence protection. Finding monopoly solutions for non-existent supply problems is not what legislators have ever thought their job to be.

Comments are closed.