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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In The News

Tampa Bay Innovation Center is now accepting applications for CO.STARTERS Rebuild, a 10-week, live-facilitated virtual program that helps small businesses impacted by COVID-19 refocus, stabilize, and build toward long-term recovery.

“Small businesses are a major economic driver contributing nearly half of the overall growth of the economy. They have been hardest hit by the COVID-19 pandemic. By offering the Rebuild program we aim to help our local economy recover more quickly by providing the tools for small businesses to drive innovation, growth and jobs.” said Chris Paradies, Tampa Bay Innovation Center chairman and CO.STARTERS facilitator.

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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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Why Distinctiveness?

Every brand starts out at zero. It’s not worth anything until customers start to associate your brand with your company in their brains. Getting those synapses to fire in the right way when your customer hears your brand name is called “good will” by intellectual property attorneys and accountants.

If you’re building brand value, then you’ll want to make sure that your customers can remember your brand. You need at least two things for that. The brand should be “sticky”, meaning memorable for some reason, and it should be distinctive, meaning its not easily confused with somebody else’s brand. I think of SPANX as an example of a brand that is both sticky and distinctive.

If your brand is sticky but not distinctive, you’re always going to have difficulty with confusion about whether the product or service is offered by you or that other similar brand. And this confusion can lead to long and expensive trademark lawsuits, when one of the two brands gets serious about defending its trademarks. I’m thinking of all the moose litigation initiated by Moosehead Breweries as an example of attempting to defend a sticky, but not particularly distinctive, brand for beer.

So, pick a brand that’s distinctive. It’s much easier to make a distinctive brand sticky than it is to make a sticky brand distinctive. But we’ll save that for another post.

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Copyright Errors Might Be Fatal

Unicolors v. H&M, 2020 U.S. App. LEXIS U.S. App. LEXIS 17097 (9th Cir. May 29, 2020)

This ruling is a big change in the way that copyright lawsuits are to be handled in the quixotic Ninth Circuit.

The copyright owner used a way of grouping copyrighted items together into a single application. Unfortunately, it used the wrong one.

A judgment for $266,209.33 in damages and $514,565.47 in attorney’s fees and costs was reversed by the court of appeals, sending the matter back to the district court. According to Section 411(b)(1) of the Copyright Act a registration certificate that contains inaccurate information or errors can still serve as the basis for a lawsuit unless “…the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate…” and “…the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.” 

The Copyright Act provides a way for district courts to seek advice from the Register of Copyrights. It used to be optional, but it is now mandatory in the Ninth Circuit if the registration certificate contains inaccurate information and that the inaccurate information was included on the copyright registration application with knowledge that it was inaccurate.

Authors and artists should be careful to correctly use applications that allow a group of copyrighted works to be registered in a single application. Rules have been relaxed and allow cost effective registration if you know what you are doing.

Consider taking iPscaling’s copyright creative workshop to learn the correct way to file for your copyright registrations. It’ll get you started right, and you won’t have to lose three quarters of a million dollars to learn this lesson.

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trade secret

Possession of a Trade Secret Is Enough?

This is an interesting case out of Pennsylvania, because the company possessing the trade secret did not own it. Yet, the court of appeals held that it still had standing to bring a lawsuit. Nothing in the Pennsylvania statute required “ownership” per se in order to sue for misappropriation of a trade secret.

In Advanced Fluid Systems Inc v. Huber, No. 19-1722 (3d Cir. 2020), there was another wrinkle. The company wasn’t using a nondisclosure agreement. However, the appeals court found other measures that protected the information. So, not having an NDA might not be fatal to a trade secret claim. Nevertheless, why not have an NDA, when you can quickly and easily create an NDA + iP agreement with the iPscaling trade secret sprint.

Or click here to sign up:

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Am I allowed to refer to a trademarked product when selling another product?

A nondeceptive, descriptive use of a brand name is a “fair use” of a trademark in some cases. Now, this doesn’t mean you won’t be sued, if a particular trademark owner is aggressive with trademark lawsuits. So, be careful to make sure that your use is the type that is undeniably fair…

So, what type of use might that be?

  • Your use of the mark must use the mark to describe a person, place or attribute of goods or services.
  • The mark must be used in the ordinary course of your language; and in the ordinary text portion of your use, rather than in a banner or as a label.
  • Don’t set the mark apart from your other text in any way.
  • Don’t use the logo or colors associated with the mark as used by the owner of the trademark.
  • If you are using the brand name for comparison or descriptively as the original source of goods being resold, make sure that the comparison or description is provably truthful and in no way deceptive.

For this last point, if any comparisons or use to identify original origin are to be made, make sure that you are absolutely correct, that any pictures of the product used are your copyrighted work or are licensed by you, and any comparison should be factual and objectively verifiable. For example, if any testing was done to compare one product to another, then it should be done by an independent, qualified testing service. Comparisons that are ambiguous or subjective should be avoided if a brand name is used in connection with the comparison.

In the U.S., courts have found disclaimers helpful in reducing possible confusion in connection with repackaged goods, resales, preowned sales, comparative advertising and criticism. Care must be taken in a disclaimer to avoid introducing confusion or not helping to reduce it. So, any disclaimer should be prominent and clear in its purpose to avoid confusion. Prominent means both close in proximity to the use of the mark and as close to equally visibility between the mark and the disclaimer, as possible.

The language of the disclaimer makes a difference too. Don’t play games with this. The disclaimer should clearly state that there is no connection between the company or brand selling the goods or providing services and the original source of the goods. Words like “…no affiliation, license or relationship with…” the owner of the mark, without any equivocation.

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Patent & Trademark Office Deadlines

The United States Patent and Trademark Office has provided a cost-free way to extend some deadlines that could not be met due to the pandemic. Some responses may be extended to June 1, 2020 if the delay was due to COVID-19 related circumstances. If you need help, schedule an online video meeting with Chris Paradies, a U.S. Registered Patent Attorney in Tampa, Florida, using this link:

Certain deadlines from March 27th to May 31st may be eligible for extension to June 1, 2020.


The following responses in patent matters are included (without limitation):

  • reply to an Office notice issued during pre-examination processing1 by a small or micro entity;
  • reply to an Office notice or action issued during examination or patent publication processing;
  • issue fee;
  • notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
  • appeal brief under 37 C.F.R. § 41.37;
  • reply brief under 37 C.F.R. § 41.41;
  • appeal forwarding fee under 37 C.F.R. § 41.45;
  • request for an oral hearing before the Patent Trial and Appeal Board (PTAB or Board) under 37 C.F.R. § 41.47;
  • response to a substitute examiner answer under 37 C.F.R. § 41.50(a)(2);
  • amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection under 37 C.F.R. § 41.50(b);
  • maintenance fee, filed by a small or micro entity;
  • request for rehearing of a PT AB decision under 3 7 C.F .R. § 41.52;
  • request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c) or 41.127(d); or
  • petition to the Chief Judge under 37 C.F.R. § 41.3.

The patent office as provided additional instructions and may consider other extensions than those specifically listed. The patent office will waive the petition fee in 37 C.F.R. § 1.l 7(m) when the patent applicant or patent owner files the delayed response or fee with a petition under 37 C.F.R.
§ l.137(a) and the statement: “A practitioner, applicant, patent owner, petitioner, third-party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.” See 35 U.S.C. § 41(a)(7).

The inclusion of this statement is treated as a request for sua sponte waiver of the petition fee under 37 C.F.R. § 1.17(m). This petition to revive may be submitted via the USPTO patent electronic filing systems (EFS-Web or Patent Center) using document code PET.RELIEF or by mail directed to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

Notice that the list of reasons in the statement is not all inclusive. If the outbreak materially interfered with timely filing, for any reason, then an extension of time may be requested using a no fee petition.


The trademark office has provided instructions about the forms to use, types of matters eligible, and the language of the statement. The following responses for trademarks are included:

  • response to an Office action, including a notice of appeal from a final refusal, under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a);
  • statement of use or request for extension of time to file a statement of use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a);
  • notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.l0l(c) and §2.102(a);
  • priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i);
  • priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);
  • transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 114lj(c) and 37 C.F.R. § 7.3 l(a);
  • affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);
  • renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
  • affidavit of use or excusable nonuse under 15 U.S.C. § l 141k(a) and 37 C.F.R. § 7.36(b).

For abandoned applications, the Trademark Electronic Application System (TEAS) “Petition to Revive Abandoned Application” form should be used. For canceled/expired registrations, trademark owners should use the TEAS “Petition to the Director” form.

In all trademark cases, the petition must include a statement: “The delay in filing or payment was due to a practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.”

The inclusion of this statement is treated as a request for a waiver of the petition fee under 37 C.F.R. § 2.6(a)(l5).

The petition for trademarks must be filed not later than two months after the issue date of the notice of abandonment or cancellation. 37 C.F.R. §§2.66(a)(l), 2.146( d)(l). If the applicant or registrant did not receive a notice of abandonment or cancellation, the petition must be filed not later than six months after the date the trademark electronic records system indicates that the application is abandoned or the registration is canceled/expired. 37
C.F.R. §§ 2.66(a)(2), 2.146(d)(2).

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