Games Not Patentable?

Games have been having a hard time when it comes to surviving challenges to patentability. Most recently, Bot M8 lost its patent lawsuit against Sony, because its claim was not patentable subject matter. The court used the two-step analysis from the supreme court’s Alice decision to invalidate the claim.

The lawsuit alleged that Sony’s PlayStation 4 “Uncharted 4” and “Uncharted: the Lost Legacy” games infringed claim 1 of U.S. Patent No. 7,338,363. However, the court found claim 1 was directed to unpatentable subject matter.

The court found “…claim 1 of the ’363 patent recites the abstract idea of increasing or decreasing the risk-to-reward ratio, or more broadly the difficulty, of a multiplayer game based upon previous aggregate results.” This is step 1.

That’s bad enough, but it gets worse for Bot M8. “But the claim leaves open how to accomplish this, and the specification provides hardly any more direction.” These days, the written description requirement is harder to satisfy. A complete explanation of how the invention works and how it solves a technological problem can be very helpful.

Instead, the court found “…the claim merely recites result-oriented uses of conventional computer devices.” Technically, a claim may define a limitations in functional terms, but if it does, the specification should provide some examples of how the function works, how it should be implemented in practice. In essence, the written description and drawings help a person of routine skill understand how the functional limitations limit the claim to a particular application of an abstract idea, which is often sufficient to overcome invalidity based on patent ineligible subject matter.

This court found “…neither the patent specification, patent owner, or patent owner’s experts articulate a technological problem solved….” Now, that’s going to be a problem. The owner and expert should at least be able to explain how the patented technology solves a technological problem. It’s always good to solve some technological problem in computer implemented inventions, even though it is not an absolute requirement.

The court found that “…the ’363 patent teaches a game machine that updates the game conditions based on past results to keep players engaged.” Unfortunately, the patent specification didn’t explain in detailed enough examples to satisfy this court how that was accomplished. The court cited to a Federal Circuit decision that “’…held that improving a user’s experience’ remains, ‘without more,’ an insufficient technological improvement and, thus, not patentable.” Citing Customedia, 951 F.3d at 1365.

Game patents haven’t done well. In Planet Bingo v. VKGS, 576 F. App’x 1005 (Fed. Cir. 2014), the federal circuit found the claims patent ineligible as an abstract idea, computerized management of a bingo game. In re Smith, 815 F.3d 816 (Fed. Cir. 2016) was found to be patent ineligible, because it was nothing more than a new set of rules for a blackjack casino game. In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018) was patent ineligible for the same reasons.

These types of rule-based claims are distinguished from decisions like McRO, Inc. v. Bandai Namco Games America, Inc. 837 F.3d 1299, 1314, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016), which found claims drawn to an improvement allowing computers to produce “accurate and
realistic lip synchronization and facial expressions in animated characters” that was produced only by human animators, previously, but with a different method. Thus, these claims were a technological improvement that did not preempt all lip synchronization schemes but only the specific rule-based scheme recited in the claims.

Game patents that attempt to claim the rules of the game and nothing more than well known generic computer components or steps are going to continue to have problems with being declared patent ineligible. Game technologies that solve some technological problem and recite a particular technological solution to the problem will do much better.

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copyright, patent, trademark


How did iPscaling come about? 

Years ago, I started by teaching live intellectual property training to startup entrepreneurs in person in small meeting rooms and classrooms all across the Tampa Bay region.?

My idea was to reach new startups before they made the common mistakes that I was seeing in my legal practice.??? Companies were being sued by larger competitors when they could least afford to defend a lawsuit. Business owners were putting the rights to iP in their own name, instead of the company name, or worse… neglecting to own the rights entirely … with all the problems and costs that you might be able to imagine. If you don’t own the iP, then somebody else does.

These classes were very effective for groups of 10 – 20 business owners, but hour-long classes would stretch into two hours with questions.

Then, I did the math. About 400,000 new businesses register with the Secretary of State’s office in Florida every year. I would have to give 20,000 classes a year just to reach all of the new business owners filing LLC and corporate registrations in Florida. But wait. That would mean 20,000 classes on copyright, plus and equal number on trademarks, plus an equal number on trade secrets… Well, you get the picture, right? I needed to find a way to scale… I had to listen to my own advice.

So, I started experimenting with technology as a way of reaching more business owners. It wasn’t easy. Back when I started, the technology for interactive teaching didn’t exist or was super clunky. Also, the idea was to reach business owners BEFORE they made mistakes, but passive videos on Youtube don’t work. There’s no accountability. No follow through. Busy business owners need encouragement to not only learn what they should do but also to get it done right.

Most business owners wanted me to do it for them, but overhead of a law firm is high. Many business owners either went without or had to save up money to pay even my firm’s reasonable flat fees, which add up fast. It also meant that I would never achieve my goal, because my firm can’t represent hundreds of thousands of clients. There are only 140 Florida Bar certified intellectual property attorneys in my state, last time I checked. Many of those are litigators and only represent clients AFTER the damage is done.

So, I started online training, the IP Workshop, which eventually was rebranded as iPmasterclass. What I realized is that business owners failed to grasp a fundamental concept, which was holding them back. Intellectual Property includes trademarks, copyrights, trade secrets and patents, but intellectual property does not add value to a business. It’s a cost to a business. What does add value?


Intangibles are the things you can’t see and can’t touch that intellectual property protects. It’s the good will in your brand, the value created from creative works that are exclusively yours, the competitive advantage from keeping your know-how, processes and specialized knowledge secret, the ability to prevent others without a license from using or selling your inventions, and much much more…

If you’re not understanding this right now, you’re not alone. I went back and forth with one very bright client to way to long trying to explain the difference between “good will” in a brand and the brand/trademark itself. Legally and financially they are two different concepts. A trademark assignment must transfer both the trademark and the associated good will. Otherwise, the assignment is invalid.

It’s things like this that can drive clients crazy.

Then, I had a thought. What if I could make it easy to understand the difference between “intangible” property or “iP” and intellectual property or IP? It took me awhile to find the right metaphor: the Concertina principle. But this took root, and business owners understood. It’s the iP that gives a business its competitive advantages, building value in the business. The IP merely helps to own and protect it, which allows the owner to grow its value without undue fear of loss. This idea gave birth to the “own protect grow” 3-step process, and iP scaling or “iPscaling” was born.

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copyright, domains, patent, trade secret

What Ownership Does…

Ownership is more than just owning something.

When I was an army officer, we assigned drivers to particular vehicles. Why? Drivers take pride in their vehicles and maintain them better when they take “ownership”. It was enough to assign the vehicle to the driver. Downtime was reduced.

Ownership is a mindset.

If you truly OWN your iP, others will respect it more. So, take the time to own your iP.

It doesn’t take that much time or money. Just make sure the agreements necessary to transfer rights in iP to your company are available and used.

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Can I Patent This?

Yes you can!

That’s what the board said in ex parte Linden.

Examiners are challenging claims of patents that are patentable as being directed to “ineligible subject matter” under section 101 of the patent law. This means that the claims are not patentable, but only due to the invention being directed improperly to some “abstract idea” rather than some practical application. (This stems from the difficulty in applying the Supreme Court’s logic in its “Alice” decision, which has left many inventors and patent professionals, alike, seemingly lost in patent Wonderland.)

The board disagreed with the Examiner’s reasoning for rejecting claims as ineligible in ex parte Linden. So, this case is instructive for showing software that is patent eligible.

Since no claims recited any mathematical concept, the Examiner was mistaken to base a rejection of the claims on an algorithm being recited in the specification. At least one mathematical concept must be recited in the claims to even go there.

Also, while it’s possible for transcription to be performed by a human, the board found the claims directed to a specific implementation that could not be performed in the human mind. The board pointed to the limitations in the claims including the steps of normalizing an input file, generating a jitter set of audio files, generating a set of spectrogram frames, obtaining predicted character probabilities from a trained neural network, and decoding a transcription of the input audio using the predicted character probability outputs. These steps are directed to a machine, not the human mind.

The Examiner’s argument that the claims recited “organizing human activity” was rejected by the board, also, because these steps have nothing to do with human activity.

The board sided with the Applicant that “…the claims of the current application include specific features that were specifically designed to achieve an improved technological result…” providing “…improvements to that technical field.”

Thus, the boards decision provides a blueprint for overcoming hasty rejections of claims that fail to provide any logical reason that specific limitations of claims are patent ineligible. Too often, Examiners seem to be rejecting claims on flimsy accusations of patent ineligibility. More board decisions like ex parte Linden will be needed to correct this common practice, which persists, notwithstanding the patent office’s revised guidance issued in October 2019.

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Do I need a patent attorney to file a U.S. patent?

If you are filing a patent in the U.S., the law does not require you to have a patent agent or attorney.

That said. A patent application is not easy to draft without significant training. Even for experienced patent attorneys, with all of the changes that are occurring in the law, drafting a patent application that will stand up to a legal battle in the future is challenging, to say the least.

So, you SHOULD hire the best patent attorney that you can afford, if you really NEED a patent.

The real question is … why do you need a patent?

I’m a US registered patent attorney and make my living from preparing, filing and stewarding patent applications through the patent office.

Most innovative and creative startups don’t NEED a patent.

If you need a patent, then you should be prepared to spend the money to get a good one.

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