New Guidance from the USPTO – a Boon for Patent Applicants

On January 4, 2019, the USPTO announced the issuance of revised guidance relevant to 35 U.S.C. § 101 (Subject Matter Eligibility) rejections. Entitled, 2019 Revised Patent Subject Matter Eligibility Guidance, the document adds a new pathway for patent eligibility, whereby a claim that includes a judicial exception is still subject matter eligible under 35. U.S.C. § 101, if the judicial exception is “integrated into a practical application” of the judicial exception. The guidance was incorporated into the Federal Register on January 7, 2019, and applies to all USPTO personnel, which includes the examiners that review applications for 35 U.S.C. § 101 concerns, and the administrative judges that oversee appeals and disputes on these issues.

Of considerable note, the new procedure, referred to in the guidance and Federal Register as “revised Step 2A,” changes how Step 2A of the Alice/Mayo test is applied.

The old Step 2A asked whether a claim is directed to a judicial exception.   There are three enumerated judicial exceptions: 1) laws of nature; 2) natural phenomena; and 3) abstract ideas. If a claim had no judicial exception, it was patent eligible subject matter.  If a claim did have a judicial exception, the analysis would then move to Step 2B for further review.

The revised Step 2A still looks to see if there is a judicial exception in a claim, and if there is no judicial exception, the claim is considered directed to patent eligible subject matter.  However, the revised Step 2A differs in that if a judicial exception is identified, the claim is still directed to patent eligible subject matter if the judicial exception is “integrated into a practical application” of the judicial exception. For example, if a patent application with claims directed to a software method which incorporated an abstract idea, so long as that abstract idea is integrated into a practical application of that abstract idea, the claim is directed to patent eligible subject matter and may still be entitled to patenting.

 

The Guidance in Action at the Patent Trial and Appeal Board

Now that a little over a month has passed since the new guidance has gone into effect, we are starting to see some opinions from the Patent Trial and Appeal Board (PTAB).  While the PTAB has still issued a greater number of affirmed 101 rejections than reversals since the new guidance, the opinions have been positive with respect to those reversals.

One very telling reversal came on application 14/282,015, for claims directed to a software-based system for vehicles that allows users to provide consent for installing optional software updates that add a feature to a vehicle module or adjust a configuration of an existing feature, and, in lack of receipt of such consent, displaying an icon in a gauge cluster in the vehicle.  The examiner had initially rejected the claims under 101 as directed to: i) the abstract idea of updating software; and ii) organizing human activity (i.e., receiving consent to take an action).

The PTAB reversed, noting that there was a “specific practical application” of the abstract ideas in the claims.   The PTAB found that the claims were “directed to a practical application of updating software specifically for a vehicle module, in which user consent is required and in which lack of receipt of user consent is communicated to a user via an icon within the gauge cluster of a vehicle.  The opinion also noted that the claims were “directed to providing in a head unit display of the vehicle an indication of an optional status of the software update and a request for consent to install the optional update and upon receipt of user consent sends an update command over the vehicle bus and installs the update to a memory of the vehicle module.”

Notably, here we have an opinion from the PTAB identifying a quite low bar for application of the “practical application” standard.  In this case, the “practical application” seems to be not much more than having a prompt for approval that you would see on any software update (e.g., “accept the new Terms of Service”) and then displaying an icon on a display when there is an update still pending approval.

The second opinion we find interesting is one involving US Patent Application No. 12/374,372, and the following claim in particular:

A method of surfing the Internet comprising: a. selecting information on a web page; b. clicking on the information as it resides on the web page; and c. in response to the clicking, conducting a web search on the information.

The PTAB’s opinion in this case is less telling on the what constitutes “practical application” standard, as the opinion does not make such an analysis, and merely focuses on the examiner’s failing to adequately assert a valid analysis of the claim as an abstract idea unto itself.  Rather, the opinion simply notes that:

[T]he Examiner’s factual findings regarding the underlying abstract idea to overgeneralize the claimed invention under the patent eligibility guidelines at the time of the rejection in the Final Action and Examiner’s Answer and this same overgeneralized abstract idea similarly does not meet the Examiner’s requisite burden for analysis under the 2019 Revised Patent Subject Matter Eligibility Guidance.

 Given the simplicity and breadth of the claim, it is likely good news for applicants with inventions in the software space that the PTAB is not outright viewing broad claims as inherently abstract under the new guidance.  The opinion does note other likely issues with the application, but it is in the context of the PTAB’s views on 101 with which we are concerned.

Conclusion

It has only been a month since the USPTO issued the latest in subject matter eligibility guidance, and our initial impressions of how the PTAB is using the new guidance is positive and optimistic.  Even though a greater percentage of opinions citing the 2019 Revised Patent Subject Matter Eligibility Guidance affirmed the 101 findings of the examiner, the limited numbers are not truly representative of what we expect to see over the long run.  Further, a closer look at those affirmed 101 findings leads us to believe that the cases were destined to be maintained, regardless of the updated guidance.

Most notably for us is that the current interpretation of what constitutes when claimed subject matter is “integrated into a practical application” of the judicial exception seems to be initially very favorable for applicants, particularly for those with inventions in the software space.

Patenting and Protecting Artificial Intelligence in the United States

Advancements in Artificial Intelligence (AI) have been occurring at an ever-increasing rate, impacting almost every field of technology, from medical diagnosis and analysis, to driverless cars, to automated securities trading platforms, all the way to home security[i].  The arms of AI can be felt in every industry, in one way or another. Given the speed of advancement and the very nature of AI itself, it is important to consider the complex landscape around how to protect improvements in the AI space.

At first, it is important to note the types of intellectual property (IP) protection that can apply to inventions in the AI space.  The definition of IP generally comprises the core four – patents, copyrights, trademarks and trade secrets.  In the case of AI, each of these may apply, and each has its own particular usefulness and advantages.  Further, each of these types of IP has its own concerns with respect to the timing of obtaining the protection.  For this article, we will primarily be focusing on the two areas of protection that generally are of the most concern – patents and copyrights.

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Patenting AI

AI, in almost all cases, exists as a software component.  Depending on what the use case for the AI is, there may also be a hardware component (e.g., vision system, sensors, actuators), but these hardware components are generally peripheral to the core AI, which is software based.  While AI inventions based in combined software and hardware solutions or standalone software-based solutions may both be patentable, the analysis for whether an AI based system constitutes patent eligible subject matter does take into consideration what is actually involved.

Where there is a corresponding hardware component in use with the software-based AI component, the subject matter eligibility analysis is usually relatively simple, favoring eligibility over not.  For instance, if an AI system is used to automatically control a series of vision systems (e.g., security cameras) and detect intruders, the invention is likely eligible for patent protection from a subject matter perspective, assuming the application is drafted appropriately.

Where the AI system solely exists as a software solution, an examiner at the USPTO will likely give the invention more scrutiny under the subject matter eligibility tests.  We have written more on the patentability of software-based inventions in a separate article that you can find here. However, while patent applications directed to software only inventions may receive additional scrutiny, true AI inventions likely are sufficient to overcome these rejections.  In fact, USPTO Director Andrei Iancu has even discussed the patentability of AI, through discussions of “[H]uman-made algorithms”, during a hearing regarding the oversight of the USPTO in April of 2018.   Again, the critical point in securing a patent in a solely software based AI invention is appropriate drafting of the application.

With respect to patenting AI based inventions, particularly as it relates to the software component of the AI, 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 perform the same functionality.

In defining what an inventor wants to protect with respect to their software-based AI invention, it is important to look at the invention in terms of a method, or a series of steps.  Considering everything a computer does is generally a series of steps involving processing some data, framing the inventive aspects of the software-based AI invention in such a methodological manner is generally straightforward.

What inventors want to avoid is viewing the invention in the abstract, or very high-level depiction.  For instance, you cannot get a patent on the idea of “an AI based dating platform”, but you could potentially get a patent on the methods performed by the AI in order to find compatible matches (e.g., based on training models and predictive analytics).  So, a focus needs to be on what actual occurs in order to make the invention possible, not solely focusing on a conclusory statement about what problem is being solved.

Another important thing to remember when seeking patent protection for AI inventions, or any invention, is to do so sooner rather than later.  There are two main drivers for this.  First, the USPTO, and most if not all other national patent offices are “first-to-file” for priority on inventions.  What this means is that, even if you get to the market first with your invention, or conceived of the idea before another inventor, if another party’s application gets to the patent office before yours, then the patent rights will be theirs, and you will be prevented from getting a patent on the invention.

The second reason is that your ability to get a patent on an invention, even without worrying about what others are doing, can be jeopardized if you offer for sale or otherwise disclose your invention publicly before filing.  The USPTO gives you one year from making a public disclosure of the invention to file your patent application.  However, the rest of the world is not so nice, with many jurisdictions making it a bar on patentability if you publicly disclose your invention prior to filing a patent application in at least one jurisdiction first.

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Copyrighting AI

With respect to copyrighting all or portions of an invention based in AI, there are certain aspects of these inventions which are protectable and those which are not.  Copyrights cover artistic works, which includes everything from literary works, to graphical/visual works (e.g., paintings, movies, photographs), to musical works and even choreographed dances.

When considering copyrighting portions of an AI based invention, the focus is generally on copyrighting the source code.  Source code is considered a literary work for the purposes of copyrights, and inventors can receive a federal copyright registration in the uncompiled source code.

What is protected by a copyright registration on source code is the copying of the actual code.  It does not prevent others from creating code of their own that performs the same functions.  However, it does restrict the copying of subsets of the whole code, such as the copying of a module, or a series of functions.

One issue when considering copyrighting source code is how frequently the source code is updated.  Rarely is there a piece of software that is static for very long.   Updates in source code, while they may be considered derivative works of the originally copyrighted code, may not be independently covered by the initial registration.  Inventors should consider at what point they want to secure additional copyrights on later versions of a software-based invention.

It is important to note that while a copyright registration can be done at any time, as the works form in the author upon creation, statutory damages and attorneys fees are generally only available if the copyright registration is filed within 3-months of publication of the work[ii].  Filing your registration after that point will limit damages to “actual damages” (e.g., lost profit), which can be harder to prove.

Separately, more and more we see the question about whether it is possible to copyright the output of AI.  Recently there have been numerous instances of AI generating their own artistic works, such as The Next Rembrandt and Bayou.  The law is currently unsettled as to whether these works would be copyrightable.  For instance, in April of 2018, the Court of Appeals for the Ninth Circuit held that the Copyright Act only provides standing to humans[iii].  The case, involving copyrights associated with a Monkey Selfie, but the same findings would presumably extend to works authored by AI.

Of course, numerous scholarly and legal minds believe that works would be derivative works of the individuals who wrote the code for the AI, and as such those individuals would be the rightful owners of works generated by the AI.  We ultimately will have to wait to see how this plays out in the future.

 

Conclusion

Overall, it is important to understand and analyze what aspects of an AI based invention can be secured early on in the process.  Timing is crucial for both patents and copyrights with respect to being able to secure the rights and receiving the greatest protection available under the laws.  This area of technology is moving quickly, so delay and lack of planning can be devastating. Devoting at least some time to do the analysis may help with providing a roadmap for how and when to protect various aspects of your AI based invention so that you reap the greatest rewards possible.

[i]Check out our client Deep Sentinel: https://www.deepsentinel.com/

[ii] See, 17 U.S.C., 412 https://www.law.cornell.edu/uscode/text/17/412

[iii] Naruto v. Slater http://cdn.ca9.uscourts.gov/datastore/opinions/2018/04/23/16-15469.pdf

 

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.

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.

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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.

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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.

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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.