Accelerating Patent Grants and Reducing Costs for Inventors from Singapore by Leveraging the US Patent System

Companies and Inventors from Singapore can leverage programs at the United States Patent and Trademark Office (USPTO) to substantially accelerate the process of obtaining of a patent in Singapore, all while reducing the overall cost to create a global patent portfolio.

 

Background

It may come as no surprise that Singapore ranked as one of the most innovative countries in the world.  Singapore ranked #3 in the most recent 2018 Bloomberg Innovation Index.   Singapore also ranked #3 in the World Economic Forum’s Global Competitiveness Report 2017-2018, and #5 in the International Property Rights Index.

Specific areas of technology that Singapore may be known best for pushing the boundaries on are: 1) Immersive Media; 2) Artificial Intelligence (AI) and Data Science; 3) Cybersecurity; and 4) Internet of Things (IoT) and future communications 1.  All areas that are of worldwide significance and growth.  Given this, the innovations developed in Singapore are of global appeal and warrant analysis of whether international protection of the intellectual property associated with those inventions are advisable.

Given that international protection of intellectual property rights can be costly and take a lot of time to obtain, it is important to consider all ways that the process can be optimized for both time and cost.

 

Time and Cost Analysis – Singapore

Preparing and filing a patent in almost any jurisdiction is not an inexpensive endeavor.  An inventor can expect to spend around S$10,000-20,000 in professional fees for the drafting of a patent application in Singapore, and filing fees that start around S$1,700.  At current exchange rates, that is an estimated $8,500-15,800 USD.

According to the Intellectual Property Office of Singapore (IPOS), the average time to get a patent through until grant is about 2-4 years.

 

Time and Cost Analysis – United States

Preparing and filing a patent in the United States is similar in complexity to doing so in Singapore.  Drafting expenses may be slightly lower, with estimated professional fees for preparing a patent application averaging about $6,000-10,000 USD (S$8,200-13700) (our firm averages slightly lower drafting fees of around $4,000-$8,000 USD). Standard filing fees are also a bit lower, with a small entity (companies with fewer than 500 employees) having a base filing fee of $785 USD (S$1,077).

The average time on a standard timeline application in the US is about 2-3 years.

 

Options to Accelerate in the US

Both the USPTO and the IPOS share options for accelerating examination of a patent application.  However, only the USPTO offers an easy acceleration process that is based solely on the payment of an additional fee.  Called Track I Prioritized Examination, the USPTO provides the ability for applicants to pay a fee ($2,000 for small entities or $1,000 for micro-entities) and receive a first office action in the merits, and final disposition within 1 year.

Done right, the Track I Prioritized Examination procedure at the USPTO gives patent applicants quick and clear insight on patentability of an invention.  The accelerated timeline of a Track I Prioritized Examination application also gives patent applicants the ability to have insight on whether foreign filings are worthwhile, will also providing options for accelerating granting of patents in those foreign jurisdiction.

For instance, applicants can leverage the Patent Prosecution Highway (PPH), which is a series of agreements the US has with foreign patent offices, such as Singapore, whereby when a first patent office (e.g., USPTO) allows a patent application, the second patent office (e.g., Singapore) will, upon submission of a request, accelerate the examination of the patent in the second office.

I have written a blog post about this separately elsewhere.

 

One Caveat on Acceleration in Singapore

While the Track I prioritized examination of US applications is available for applications in any industry, IPOS does offer an option for inventions that are in the FinTech space that may be even more advantageous.  A new program launched in 2018 at IPOS, called the FinTech Fast Track initiative, aims to have the time to grant of such FinTech patent applications in as little as 6 months.

So, if your invention is in the FinTech space, you may still be best served by filing in Singapore.  However, if your invention is in any other technological field, the Track I Prioritized Examination application at the USPTO may offer additional benefits over filing directly in Singapore.

 

One Additional Requirement

Before filing directly in the USPTO, those applicants that are Singapore residents till must contact Singapore (IPOS) for national security clearance to file an application abroad before filing an application in Singapore.  Luckily, this is not a complex process and usually only takes a few days to a week or so prior to getting the appropriate clearances.

 

Conclusion

There are several options to accelerate receiving of a patent in the USPTO that should be quite interesting to Singapore companies and residents.  From reduced costs, to quicker allowances, and allowances that can accelerate issuance in Singapore as well as numerous other foreign countries.

With all the options available, it may be time to look at you or your company’s IP practices and identify whether some of these options may work to increase the value of your IP, while simultaneously reducing the cost to protect it.

 

 

 

Leveraging Track I Prioritized Examination at the USPTO to Slash Global Patent Filing Costs and Accelerate Obtaining of Foreign Patents

Global patent filing using conventional procedures entails significant costs.  Optimizing the use of Track I in an enterprise’s patent filing processes may provide an overlooked strategy to help drive down the cost of foreign prosecution and accelerate issuance of a global patent portfolio.

The Conventional Approach

When going global with patent filings, Applicants often follow the same route.  They begin with either a provisional or nonprovisional application in the U.S. or another jurisdiction, such as wherethe Applicant is located or where its R&D takes place.  If the covered invention warrants global filing, Applicants often pay to file an international application under the Patent Cooperation Treaty (PCT) at 12 months from the earliest priority filing.  Perhaps, with luck, they will receive a first action on the merits during the second year of the first application’s pendency.  If an Applicant filed the first application with the U.S. Patent & Trademark Office (USPTO), the examining art unit’s backlog typically determines the wait until examination starts.

By the time the 30/31 month due date under the PCT arrive, an Applicant may still be engaged in prosecution of the original application and may not have a clear view of patentable subject matter.  Depending on the art unit, or if the Applicant first filed a provisional utility patent application at the USPTO, the original application may not haven even received a first action on the merits prior to the national filing deadlines under the PCT.

Accordingly, Applicants may find themselves in the situation of making national stage filing decisions without having a clear picture of their odds of success in obtaining valuable patent scope for a given invention.  Depending on the number of countries an Applicant wishes to file in, an Applicants can easily spend $25,000 to $100,000 on these national stage filings.  This figure is just detailing the filing fees and does not include costs for prosecution of each application during examination.  All this expenditure occurs without really knowing if an Applicant stands a chance of acquiring valuable global intellectual property.  If patent prosecution turns sour in the U.S. or elsewhere, or an application collides with unforeseen prior art, then the already-invested resources may simply evaporate into a loss.

Gaining clarity relatively early in the global filing process through use of the Track I Prioritized Examination program at the USPTO, though, can avoid wasting the enterprise’s resources later during worldwide patent prosecution.

Track I:  Gaining an Earlier Picture of Clarity

As an alternative to the usual flow of global prosecution sketched above, Applicants may consider taking a different tack by maximizing the benefits of the Track I Prioritized Examination program offered by the USPTO.

As a quick background on the Track I Prioritized Examination program, it is basically a Pay-to-Play system for fast tracking the examination of a US Non-Provisional Utility Patent Application.  For an additional fee of USD $4,000 on top of usual nonprovisional patent filing fees, patent owners may file a request for prioritized examination with the USPTO, gaining access to Track I benefits.  Small entity Applicants will enjoy access to the Track I program for half of that fee ($2,000), while micro-entity discounts bring the Track I fee down to USD $1,000.    Given that most universities and other institutions of higher education can take advantage of the micro-entity status, the Track I program becomes a very viable option for those with heavy domestic and foreign patent prosecution programs.

The Track I Prioritized Examination program includes a number of special conditions, but they will typically not amount to an onerous requirement for most Applicants.  For example, patent owners may not take extensions, must file no more than 4 independent claims and 30 claims total, and must be sure to pay all fees at application filing.

As long as the Applicant files the paperwork correctly and overall U.S. Track I filings have not exceeded the Office’s quota for the year, the USPTO will usually accept the application for prioritized examination.  The Office will then issue a first Office Action within approximately 3-4 months and produce a final disposition, such as a Notice of Allowance or a Final Office Action, within 12 months.  The USPTO currently advertises that it actually issues final dispositions much earlier, by about the six-month mark.  If the final disposition displeases the filer, the Applicant retains the option to either re-pay the Track I fee to pursue another round of prioritized examination, or revert back to the standard examination timeline by submitting a request for continued examination (RCE).

Applicants may elect to use the Track I Prioritized Examination program for applications in which they expect to attempt global filing based on the anticipated value to the organization of filing in various nations.  Although the USPTO offers other techniques for accelerating prosecution, Track I has emerged as the go-to program for prioritized examination.

In contrast to the conventional approach for global filing, a Track I Prioritized Examination application will likely provide a filer with clarity on patentability before the one year deadline for PCT filing.  The insight provided by the Track I Prioritized Examination program may make global filing decision-making clearer, and help to ensure that the organization focuses resources on applications that have a significant probability for earning strong protection.  For a relatively small up-front additional fee of a few thousand dollars, Applicants may avoid wasting tens of thousands of dollars on applications that may ultimately be doomed by unknown prior art.

As a quick aside, Applicants should also consider checking to see if any inventor on an application is over 65.  If at least one inventor is over 65, the USPTO will make an application special and advance it out of turn for relatively quick prosecution.  Filing a simple petition asserting an inventor’s age will expedite prosecution.  The USPTO charges no fee for acceleration on the basis of age.  Patent owners may accordingly also use age-based acceleration to gain earlier clarity on patentability, without a fee.  Age-based acceleration, though, will most likely not be as fast as Track I Prioritized Examination.

Combining Track I with the Patent Prosecution Highway

In addition to the advantage of gaining the earlier clarity highlighted above, Applicants may also leverage other foreign filing programs available through the USPTO in conjunction with the Track I prioritized examination program.  For example, the USPTO has a number of Patent Prosecution Highway (PPH) agreements with other patent offices worldwide in which subject matter deemed patentable by one office may be allowed with little or limited additional examination.  The USPTO participates in such PPH programs with counterpart offices in Europe, Japan, Korea, China, Russia, Australia, and other jurisdictions.  Although procedures vary based on the nations involved, the basic process usually involves filing an indication of allowable subject matter from a first patent office with a second patent office patent filing, along with a petition to participate in a given PPH program.  The patent owner may thereby request limited or streamlined examination to issue a patent in the second nation based on the allowance in the first nation.

Turning back to Track I Prioritized Examination program, if an Applicant receives a Notice of Allowance or other indication of allowable subject matter relatively quickly, the owner may then parlay that allowance into accelerated allowances in other nations based on using various available PPH programs.   This not only accelerates the granting of the foreign patents, but also reduces the overall cost of foreign prosecution, as fewer office action responses are required in each jurisdiction.  The cost savings can be massive, particularly when the Applicant is entering a large number of foreign jurisdictions.

In practice, PPH programs work with varying degrees of success based on the nations involved.  For example, commentators have noted that using PPH to turn USPTO allowances into patents at the European Patent Office (EPO) may tend to hit headwinds, with the EPO essentially fully examining a given application notwithstanding a U.S. allowance.  However, using Track I allowances as a springboard to obtain accelerated allowances in other nations remains, in general, a viable option for quickly driving a global patent family to issue.   Further, if an EPO patent is part of the strategy for a given application, an Applicant’s US based patent attorneys or agents can draft and prosecute the claims of the US application with that in mind, in order to keep claims that will eventually be allowed in the US patent more similar to those that the EPO would typically grant.  This is something an Applicant would want to address early on with their counsel, so that the strategy is in place during the examination of the Track I application.

Takeaways

For slightly higher initial filing fees in the USPTO, an Applicant may leverage prioritized examination under the Track I Prioritized Examination program to gain clarity on patentability of a patent application intended for international filing.  Patent owners may thereby avoid expending resources on global prosecution of applications that perform poorly during Track I prosecution.  Owners may accordingly use Track I to inform decision-making to optimize the probability of success for global patent acquisition.  Applicants may also combine the benefits of Track I with Patent Prosecution Highway programs, leveraging Track I prioritization to accelerate prosecution globally and significantly reduce the overall cost of foreign prosecution.

Authors

James M. Smedley, Esq. & Steve Keefe, Esq.

Steve Keefe, Esq.
Senior Attorney
James M Smedley LLC

Steve is an attorney in the firm’s Intellectual Property law group. Steve has extensive experience in patent prosecution and corporate transactions. Steve’s career has given him experience both in the law firm setting as well as time spent as in house counsel. Steve’s experience with both national and international IP matters is extensive.

5 Things you Need to Know about Software Patentability in 2018

If you are a developer, tech startup or otherwise considered trying to protect your amazing new idea or technology based in software, you probably have already looked into patents as a potential to secure those technologies. (I highlight idea, as we will come back to that very salient point in a minute). Probably one of the first things you run across is everyone talking about Alice!

Who is Alice? When people refer to Alice, they are referring to a Supreme Court decision in the case of Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014). In 2014, this was a landmark ruling that shifted the applicability of 35 U.S.C. § 101 to certain types of inventions. One central component of this shift was related to the patent eligibility of inventions that were based in software (or those that were otherwise based on abstract ideas).

We will not dive too deep in the analysis of Alice in this article for two main reasons: 1) it has been covered ad nauseum elsewhere; and 2) the ruling is over 4 years old and while Alice is still the root to most eligibility analyses, there have been numerous rulings since that have broadened, extended and clarified exactly what is and is not patent eligible subject matter.

So let’s start with this, for all you developers and executives at software companies:

1. Software is Patentable
Let us be clear, software is patentable, when done correctly. Even things that are simple processes are still protectable. For instance, Sony Interactive Entertainment, Inc. just received a patent for “DISPLAY OF TEXT INFORMATION ON A HEAD-MOUNTED DISPLAY” on May 29, 2018 (See US Patent 9,984,905), and Zynga recently got a patent for providing in game tutorials for players via a “Show Me” button on May 8, 2018 (See (US Patent No. 9,962,612).

zynga_pic_2.jpg

It is important to note that a utility patent covers the functionality of the software, through defining the software in terms of systems and methods. What patents do not cover is the actual code. Source code is covered largely by copyright, which can protect direct copying of the code, but not those who write their own code to do the same thing. And that is exactly where patents step in.

Now, there is a certain bare minimum that must be reached for a software system and/or method to be patentable. Which brings us back to why I highlighted idea back in the beginning. Ideas are not patentable in and of themselves, as they are abstract and fall squarely into the realm of what is not patent eligible.

2. An Idea is Not Enough

If you are forming the next great startup and you want to be the “Uber for X” or the “Tinder for Y”, that is not, in and of itself, going to get you cross the finish line for patent eligibility. Remember, software patents are directed to covering systems and methods. Software almost always is nothing more than a series of steps (i.e., instructions) that drive a computer to take some action (e.g., process data). Some data goes in, software directs the computer as to what to do with that data, and the output is some generally useful result. Whether it is finding the closest Uber, matching you to your next soulmate, adding two numbers together, or calculating the trajectory of a rocket for sending a payload into space, it all boils down to some data going in, being processed, and a result being output.

When putting together a patent to protect your invention, your invention must be more fully flushed out than simply stating in conclusory terms what your software will do. The abstract idea alone is not protectable, but the steps you use to get to the solution (i.e., method) may be. Develop the flowcharts for how your great idea gets from problem A, to solution B. The road in between is your patentable method. For some help on this topic, the United States Patent and Trademark Office (USPTO) has provided a useful resource in the form of a Quick Reference Sheet for Identifying Abstract Ideas.

Remember, the more flushed out your idea is, the more it becomes a methodology which may be protected.

3. What you Disclose in your Patent is Important

The content you put into your disclosure is king when it comes to your patent filing, especially for software related inventions. The basic requirement for a patent application is that the drawings and specification disclose the invention in enough detail that one of ordinary skill in the art would be able to practice the invention without undue experimentation. While that is the bare minimum, remember, if it is in your application, you can use it later during examination to overcome examiner’s arguments related to novelty, obviousness and even indefiniteness. Conversely, if you do not include detailed descriptions of the various aspects of your invention, you cannot later use them in your arguments.

One thing that should be remembered when preparing a patent application for software methods is that even though you may be filing a patent application for your unreleased software product that will be launched soon as an initial version (e.g., v1, beta), there is no need to limit the patent application disclosure to just the features that are in the software now. In fact, there is no requirement to have a working prototype in order to file a patent application on an invention. This is particularly important with software, where you may be going to market with a minimum viable product (MVP), but have a roadmap that goes through several iterations, versions and include numerous improvements and features not present in the MVP.

Since there is no requirement to have a working prototype, and the enablement requirements only require that you be able to describe the invention in enough detail that one or ordinary skill in the art would be able to practice the invention – something probably already at least partially contained in your roadmap – you should consider putting details of all your future concepts, features and improvements in your application. What this does is secure your priority date for all of the future features and improvements you have planned.

This strategy also allows you to use these features and improvements in arguments and amendments during examination. It generally takes 18-24 months to enter substantive examination at the USPTO. By this time, you will have a greater insight as to what features and improvements became a big hit, and those that did not pan out as planned. This allows you to focus the examination of the application on those key features that were later implemented, without the need to file additional patent applications on an ongoing basis.

Further, by disclosing additional features and improvements in the first application, you can later file one or more continuation applications at a later time to secure patents on the individual features and improvements at a later time. Each of these continuation applications get the benefit of the earlier filing date, even though they may be filed years later.

4. How you Write the Patent is as Important as the Technology

What you disclose in the application is only part of it. How you write the application is critical. The words you use can end up coming back to haunt you, by unnecessarily limiting the breadth and scope of your rights, or otherwise acting as self-sworn statements that you cannot back away from.

For instance, restrictive words, like, “only”, “must”, “always”, and “never” may limit the scope of an invention. If in an application, the disclosure states, “The system always does X before Y”, then you have been committed to a system that either always does X before Y, or never does Y (if you don’t do X, you cannot do Y). These kinds of limitations can poke holes in the breadth of an application, particularly when related to software, where there are frequently dozens if not hundreds of other ways to accomplish a task. Think to yourself when drafting or reviewing an application whether the statements you are making are really requirements, or just simply one way you have chosen to implement the solution.

In another example, statements about what have been done in the past or are done in an industry can act as prior art against your invention. This is known as “Applicant Admitted Prior Art” (AAPA) and can be disastrous in certain cases. Commonly found in the background section of a patent, some applicants (or their patent attorneys or agents) may end up making statements that go beyond what actually IS prior art and inadvertently giving up certain rights by making such statements.

Further, even beyond just admissions of prior art, statements in the application about what is well-understood, routine and conventional in the art can come back to haunt inventors and applicants, as this can give grounds to the examiner to provide a subject matter rejection under 35 U.S.C. § 101. Avoid these statements at all cost, as they are generally unnecessary and add little value to the actual disclosure itself.

However, the recent federal circuit opinion in Berkheimer v. HP, Inc., 881 f.3d1360 (Fed Cir. 2018) also confirmed that the concept of applicant admissions in a patent specification works in the opposite direction as well. In Berkheimer v. HP, Inc., and a later USPTO memo regarding implementation of the ruling as it relates to patent examination practice. In this case, the court found that the applicant’s statement that the novel improvements contained in the application were not convention, and represented an improvement over the art, created a factual dispute that would not permit a finding otherwise under a motion for summary judgment. Simply put, feel free to include statements throughout the specification as to how the disclosed software works or functions differently than conventional software, and how it provides improvements over the conventional or routine functionality of other software.

5. Examiners are Now Put to Task on Eligibility

When it comes to patents on software based systems and methods, Alice’s spectre still haunts us to this day. Examiners are still issuing subject matter eligibility rejections under 35 U.S.C. § 101 on otherwise valid and protectable systems and methods that are based in software. Frequently, these rejections are held up only by loose accusations and conclusory statements about an abstract idea contained in the claims.

The good news is that the examiners have now been put to task on these rejections. Per a recent memo from the Deputy Commissioner for Patent Examination Policy at the USPTO addressing all patent examiners, the examiners are now required to give specific rationale for findings that specific elements of the claims are well-understood, routine and conventional in the art. The avenues for them to do this are: i) point to the specification of the present application where the applicant makes express statements about the element being well-understood, routine and conventional (note: silence is not to be construed as having made any such statement); ii) point to previous court rulings that address specific claim elements in the present application; iii) provide reference(s) that show that the claim element is well-understood, routine and conventional in the art; or (iv) take official notice.

The memo and the CAFC note that when providing one or more specific references to show that the claim is well-understood, routine and conventional in the art, that “merely finding the additional elements in a single patent or published application would not be sufficient to demonstrate that the additional element is well-understood, routine and conventional in the art.”

Further, the memo notes that when an examiner chooses to take official notice, that the examiner be “certain, based on upon his or her personal knowledge, that additional element(s) represent well-understood, routine, or conventional activity engaged in by those in the relevant art, in that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).” However, the memo then states that if challenged on this by the applicant, the examiner must provide items under (i)-(ii) above.

Conclusion

Software system and methods are still very much patentable in 2018, even in light of Alice.  However, it is important to consciously and conspicuously focus on what is it you are trying to protect, and what you say in your disclosures to the USPTO.  Done right, the pathway to obtaining a patent on a software system and method can be paved with a smooth and straightforward surface.  Follow the rules, watch what you write, include everything, and you are on your way.

 

Protecting Your Game – IP in the Video Game World

As a preface, I am a gamer.  Since playing text based games at the age of 6 on a TRS-80 (Pyramid 2000), to ESO and Fortnite today, video games have always been a part of my life.

fortnite.gif(My Solo win in Fortnite without firing a single shot – Ghillie Suit FTW)

Fifteen years ago, video games were considered obscure things nerds would play in small groups and LAN parties, or perhaps a place to play a game of Madden with your friends.  These days, video games are a massive cultural aspect, with the video game industry accounting for over $100 billion dollars in revenue a year.

In fact, these days video games like Fortnite have crossovers with massive media hits, like Avengers: Infinity War.  It is clear, video games are a cornerstone of our media and entertainment culture.

But as anyone who has ever played a game on the mobile device knows, there is never just one title in any genre.  For every PUBG, there will be a Fortnite.  For every Candy Crush, there will be a dozen tile matching games (or 17).

But why are there so many copycats and how do you protect your game from copycats?

Intellectual Property in the Video Game World

When thinking about protecting a video game, the law turns almost exclusively to intellectual property (IP) rights.

IP rights are a bundle of protections that comprise:

  • Patents;
  • Copyrights;
  • Trademarks; and
  • Trade Secrets.

Each of these various prongs are directed to a different potion of the actual construct of a video game.

PATENTS

There are two separate types of patents – design patents and utility patents.  Design and utility patents protect two very distinct portions of a video game.

Design Patents

First, design patents may be applied for to protect the UX/UI (User Experience / User Interface) of a game.  For instance, if you have a novel layout that is ornamental in nature, you can protect the ornamental appearance of the design.

USD0780776-20170307-D00000.png

US Design Pat. No. D780776 – King Com Ltd.

However, these design patents truly only cover the single ornamental design. So if a competitor changes your cute little fruit to cute little gems, the design patent will not be sufficient to protect your game design.

One advantage of design patents is that they can be obtained quickly, relative to utility patents.

Utility Patents

Utility patents cover the novel aspects of the actual game, such as game mechanics.  A utility patent can cover anything from gameplay mechanics and methodology, to user interface functionality, to how data is received and processed by the underlying computer systems.  Truly, anything that is utilitarian, can potentially be covered by a utility patent.

There are of course limitations, especially when it comes to video games.  First is that for an aspect of the game to be protectable, it must be patent eligible subject matter, and in the case of video games, this means the claimed inventive aspects of the video game must be more than an abstract idea.

While there are a lot of considerations to think about as to whether a utility patent is right for you in protecting your video game, it is definitely still something to consider, and something that large companies are doing, even on the most nuanced portions of their games.

For instance, Zynga Inc., just received a patent on an aspect of their Frontierville (The Pioneer Trail) game.  Namely, using a “Show Me” button in a game to identify to users how to perform tasks in a game that may not be easily apparent until detailed to the user.  (US Patent No. 9,962,612, granted May 8, 2018).  Similarly, Nintendo just received a patent on an aspect of matching players that are close in proximity to one another for providing the ability to share user information with one another.  (US Patent No. 9,967,737, granted May 8, 2018).  As you can see, if it has functionality, or relates to game mechanics, it could potentially be patented.

There are significant considerations to be made with respect to filing a patent.  But we will save those for a series of separate articles, as the actual process of drafting, filing and prosecuting a patent can be quite complex.

One additional benefit of having a patent is that since it covers the mechanics of a game, it is likely to cover other games that copy or lift from your game design.  Further, patents may also be licensed or assigned to others, providing additional streams of revenue, value and capital to your company.

COPYRIGHTS

Copyrights cover the actual expression of the video game.  Copyrights can cover your artwork, the source code, the plot lines, the video cutscenes, the audio elements, and more.  If it is an audio, visual or textual work, it most likely may be copyrighted.  Again, there are limitations, but assuming there is a level of creativity and originality involved, it may be protectable.

The main limitation on copyrights is that they generally only cover the actual expression, not the ideas or concepts behind the expression.  While there are several examples throughout the years, there are two relatively recent cases that we can look at to drive the point home about what is and is not protected via copyright.

The first is Tetris Holdings LLC v. Xio Interactive Inc., 863 F. Supp. 2d 394, 410 (D.N.J. 2012), which involves the venerable classic Tetris, versus a virtual clone, “Mino”.  Below is an image of the two games side by side.

Tertis Clone.jpg

It is not hard to see the similarities, because Xio’s intent was to copy the game mechanics and gameplay of Tetris.  As noted before, these are aspects of a game that are not protectable by copyright.  However, the court found that Mimo went beyond just copying the game mechanics, but copied the actual expression.  The court even pointed to other examples of how one could create a legal clone without running afoul of copying the expression, noting in particular Nintendo’s Dr. Mario.  So here, if you are truly copying not just the game mechanics, but the overall look and feel, you may be running afoul of copyright laws.

Dr Mario.jpg

 

US Patent 5,265,888 – Dr. Mario Patent!

But what if your game is nothing more than a copy of the game mechanics, with no similar appearances?  Well, we can look to our second case, DaVinci Editrice S.R.L. v. Ziko Games LLC, 183 F. Supp. 3d. 820 (S.D. Tex. 2016), for the answer.  In this case, DaVinci Editrice, maker of the popular card game, “Bang!”, accused Ziko Games of distributing a game, “Legends of the Three Kingdoms” (“LotTK”), that infringed DaVinci’s copyrights.

In this case, the appearances were completely different.  Bang! Was a game situated in the wild west, while LotTK was set in ancient China.  The cards looked different.  The artwork was dissimilar.  Visually, the similarity ended at the fact that they were both card games.  Instead, DaVinci argued that LotTK copied the characters of Bang!.  Bang! had a Sheriff, Deputy, Outlaw and Renegade that had the exact same functionality as LotTK’s Monarch, Minister, Rebel and Turncoat.

However, the court found that this amounted to nothing more than copying of game mechanics, which are not subject to copyright protection.  Notably, the court found that these mechanics are dissimilar to book or movie plot, which would be protectable.

So, when it comes to copyright protection, it is truly the expression that matters.

TRADEMARKS

Trademarks protect the branding of a game.  Trademarks can truly extend to anything that evokes in the consumer the origin of a good or service.  It is not just the game name, studio name, or logos, which are what most people commonly think of when they think of trademarks.  Trademarks can also extend to color (e.g., Tiffany & Co. have a registration for their robin’s egg blue boxes with white ribbons), sound (e.g., NBC has a registration for the three note “NBC Chimes” – you probably just heard it in your head) and even scents (e.g., Hasbro registered the smell of PLAY-DOH).

In the video game world, you can protect identifiers like the game name, studio name, taglines, and logos.  But you can go further, like Microsoft did for HALO’s Master Chief, and trademark certain names and other aspects, to the extent that they identify the source of the product or service.

One main consideration with trademarks is that they cannot be generic or merely descriptive of the underlying goods or services.  You could not get a trademark on the term “First Person Shooter” as that is merely a generic term for a type of game.  Examples of merely descriptive marks may be something along the lines of “Goat Simulator”.  This is actually a good example in that, while you can never get a registration on a mark that is generic, you CAN actually get a registration on a mark that is descriptive IF that mark develops “Secondary Meaning.”  Secondary meaning is when the consuming public comes to know the descriptive mark as an origin of goods or services.  Goat Simulator may have been descriptive of the game at first (i.e. a game that simulates the life of a goat, quite questionably I may add), but with hundreds of thousands of downloads under its belt, it likely has become a name that most people recognize.

Marks that are suggestive, arbitrary or fanciful are able to be protected without any evidence of secondary meaning, and may be registered immediately, assuming the mark is in use.  That is, assuming it is not confusingly similar to another mark in use.

TRADE SECRETS

Trade secrets are the secret sauces kept under lock and key.  These are things like the recipe for Coca-Cola or the KFC’s 11 Herbs and Spices, at least until they were revealed.  Which is the crux of trade secrets.  They are only trade secrets for so long as they remain a secret.  Here, the real priority is ensuring that you properly keep access to these trade secrets as limited as possible.  Once out of the bag, there is nothing you can do to put them back in the bag.

For trade secrets, developing policies around access, maintenance and security of the information is crucial.  Sure, you may be able to sue the employee or company who stole your trade secrets, but after that, it is in the public domain for good.

TAKEAWAY

There are numerous aspects of intellectual property that apply to video games.  It is important to come up with a plan to protect those rights, and determine what bag of rights you would like to protect and how to protect them.  Coming up with a strategy that works for your game is crucial, and timing can be very important, as each of the various types of intellectual property has ramifications for not taking action by a certain time.  Speaking with counsel about creating and implementing the strategy should be part of any game development process.

Challenging A Patent At The PTAB – It’s All Or Nothing, Baby

On April 26th, the USPTO released a memo stating that, in light of the United States Supreme Court decision in SAS Institute Inc. v. Iancu, 2018 WL 1914661, (U.S. Apr. 24, 2018), when the PTAB initiates a trial, it will do so on all challenges raised in the petition.

The former approach taken by the PTAB allowed for the panel to initiate trial on a subset of all of the challenges submitted by a petitioner.

The memo went on to state that for those trials currently in process, where only a subset of the challenges are being reviewed, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.”  Noting that these changes may create additional hurdles, the memo provides that these panels may “take further action to manage the trial proceeding, including, for example, permitting additional time, briefing, discovery, and/or oral argument, depending on various circumstances and the stage of the proceeding.”

This memo is quick on the heels of the ruling in SAS, which came just two days earlier.

This ruling goes hand in hand along with the Supreme Court’s ruling in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, which held that inter partes review of patents are valid and do not violate Article III of the US Constitution or the 7th Amendment.  It is also interesting to note that both were decided on the same day (April 24, 2018).

On one hand, we have resolution and clarity on the validity of the inter partes review process, and that petitions will be heard in their entirety or not at all.  On the other hand, what we do not know is how this will alter the decisions made by the PTAB.

For instance, previously, when the PTAB had the ability to select which challenges in a petition it would hear, the PTAB would offer quite comprehensive explanations for the decisions it makes.  It is unclear as to whether the PTAB will be able to keep to the same time schedule that it has with these trials, and still offer the same comprehensive explanations it currently does, now that the panel must hear all challenges raised in the petition.  The flip side to this is it may also result in the PTAB accepting fewer challenges, since it simply does not have the capacity to provide detailed findings for the broader challenges it now must hear.  Alternatively, the PTAB may simply start offering more limited explanations for its findings.

Further, there is a question as to how this will impact patent infringement litigation matters in courts where certain judges refuse to stay trials where an ongoing inter partes review is being conducted on less than the entirety of the granted claims.  Since now  that inter partes review approved by the PTAB will be taking the all or nothing approach, it is possible judges may take this into consideration when reviewing a possible stay in these litigation matters.

While we look forward to what comes next, the one thing we do know is that inter partes reviews are here to stay.  For parties being threatened by patents they feel are invalid, this is good news.  Inter partes review provides these parties the option to challenge bad patents in a forum that is much more efficient and cost effective than the US court system.

USPTO Memo May Be Boon To Patent Applicants

On Thursday, April 19, 2018, the United States Patent and Trademark Office (USPTO) issued a memo addressing changes in subject matter eligibility reviews under 35 U.S.C. § 101 in light of the recent federal appeals court (CAFC) ruling in Berkheimer v. HP, Inc.  

This is the latest in what appears to be a steady series of updates from the USPTO on guidance for both examiners and practitioners alike.

The Ruling

Without focusing too much on the findings of the court in Berkheimer v. HP, Inc., 881 f.3d1360 (Fed Cir. 2018), there were several important takeaways from that ruling that are important to note with respect to the present memo from the USPTO and for applicants preparing or having patent applications prepared for them.

First, as part of the ruling, the CAFC found that actual evidence must be provided when attempting to establish that an element of a claim or claimed combination is nothing more than something that is “well-understood, routine and conventional  to a skilled artisan.”    Further, the CAFC doubled down on this by noting, “The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.”

Second, the CAFC noted that the specification of the patent in question expressly supports the improvements and functionality the claimed invention provides over the prior art.  These improvements were called into question by HP, and the lower court agreed with HP.  However, the CAFC noted that “there is at least a genuine issue of material fact in light of the specification,” and that summary judgment is inappropriate with respect to the claims in question.

The Memo

The USPTO memo acknowledges that the ruling in Berkheimer v. HP, Inc. is specifically applicable and relevant to current patent examination practices and procedures, specifically related to subject matter rejections under 35 U.S.C. § 101, in light of previous findings in Alice Corp. v. CLS Bank International and Mayo Collaborative Servs. v. Prometheus Labs., Inc. (which have been so thoroughly discussed that we will assume for the purpose of this post that most are aware of the outcome and impact of those rulings).

Most importantly, the memo addresses exactly how examination procedure will change in light of the ruling in Berkheimer v. HP, inc.  Specifically, examiners now are now expressly encouraged to provide specific examples when claiming that a specific element of a claim is well-understood, routine and conventional in the art.  The avenues for them to do this are: i) point to the specification of the present application where the applicant makes express statements about the element being well-understood, routine and conventional (note: silence is not to be construed as having made any such statement); ii) point to previous court rulings that address specific claim elements in the present application; iii) provide reference(s) that show that the claim element is well-understood, routine and conventional in the art; or (iv) take official notice.

The memo and the CAFC note that when providing one or more specific references to show that the claim is well-understood, routine and conventional in the art, that “merely finding the additional elements in a single patent or published application would not be sufficient to demonstrate that the additional element is well-understood, routine and conventional in the art.”

Further, the memo notes that when an examiner chooses to take official notice,  that the examiner be “certain, based on upon his or her personal knowledge, that additional element(s) represent well-understood, routine, or conventional activity engaged in by those in the relevant art, in that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).”  However, the memo then states that if challenged on this by the applicant, the examiner must provide items under (i)-(ii) above.

The Analysis

What the USPTO Memo indicates is that for a rejection under 35 U.S.C. § 101 to be applicable to an element of a claim that an examiner believes is well-understood, routine and conventional in the art, there must be more than a mere statement by the examiner.  The memo does a great job of putting examiners to task with respect to overly broad and under supported 35 U.S.C. § 101 rejections.   One of the best aspects of this is requiring an examiner to go back to the drawing board and either withdraw or issue a new 35 U.S.C. § 101 rejection if they rely solely on the “official notice” prong of the analysis.

Further, with the memo expressly making reference to the fact that simply because an examiner can find a single reference of an element in piece of prior art, does not by itself make that element well-understood, routine and conventional in the art, the USPTO is helping to push the distinction between subject matter rejections under 35 U.S.C. § 101 and rejections based on prior art under 35 U.S.C. §§ 102-103.

While the memo is less than a few weeks old at the time of this publication, it does appear that the memo is intended to put examiners to task with respect to conclusory statements made for rejections under 35 U.S.C. § 101.  In practice, we will see if this is the case as the next set of office actions roll out.

One last thing to consider, for both applicants and practitioners, is the note by the CAFC that the factual analysis of whether an element of a claim is well-understood, routine and conventional in the art will turn to the specification of the patent itself.  In the decision, it was noted that since the specification stated that the claimed elements were improvements over the prior art, it became a factual dispute as to whether the element was actually well-understood, routine and conventional in the art.  The CAFC and the memo noted this works both ways, that not only do statements of how the art is improved are read from the specification, but also statements about what is well-understood, routine and conventional in the art.  So as both a cautionary and advisory tale, remember to watch what you say in your patent specifications, as they can and will be used against you in a court of law!

Last Words

Additional guidance from the USPTO on subject matter eligibility analysis under 35 U.S.C. § 101 is always welcome.   Even better, the memo hints at further changes to come.  As subject matter eligibility has always been a moving target, any clarity is always a boon to applicants and practitioners alike.    It is also good to see that the USPTO is implementing safeguards that provide express pathways for applicants to challenge lazy or under developed rejections from examiners.  All-in-all, this is good news for those seeking patents in the technological fields, such as software and biotech.