Law of the Game on Joystiq: Patently Complicated

Each week Mark Methenitis contributes Law of the Game on Joystiq, a column on legal issues as they relate to video games:

Patents seem to be the intellectual property du jour for conflict in the video game world. After all, it was only a matter of time before the conflicts that have engulfed technology at large would spread to our little corner of the electronic world. However, patent law is not exactly a simple area of the law, and it's one that, like most of the other intellectual properties, is generally not well understood. Because of the complexity, someone mentioned it would be a good idea to give an overview of patent law and patent infringement. I should mention before I begin that I am not a patent attorney, meaning I haven't taken the patent bar, and so I wouldn't consider myself an expert on the subject. More importantly, this commentary applies to 'utility patents,' which is what most people mean when they simply say 'patent.'

To start from the most basic level, a patent is a type of intellectual property, like a copyright or a trademark. Patents, generally, protect ideas for a limited time (20 years in the US). The theory behind a patent is that someone who invents something should be able to profit from that product for some period of time before anyone can produce the item. So, for example, when a new pain reliever is patented, only the patent holder and those who have a license from the patent holder can produce the product until the patent expires. Once the patent has expired, then anyone can produce that product. In fact, this is the big catch with patenting: you have to expose the "formula" for the product, in detail, in the patent application, which becomes public record. Many companies opt to not patent items for this reason, keeping them as "trade secrets" instead. A well known example is the formula for Coca-Cola. While this overview may sound simple, there is much more to a patent.

Patents also have the most stringent requirements of any intellectual property. According to US patent law, anyone who 'invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.' However, there are more requirements beyond that statutory summary. First, the idea must be 'novel,' meaning it has to be something new and unique. In fact, if you have a product on the market for over a year, you are no longer eligible for a patent even if you invented the product. Second, the product must be 'nonobvious.' The nonobvious test simply means that the product can't be something that anyone in the field of study would come up with upon examination of the patent this patent is based on. Typically, changes in capacity, size, scale, etc. are considered 'obvious' changes. To put it into car terms, an obvious change to an in-line 4 cylinder engine would be an in-line 6 cylinder engine and a nonobvious change would be a gas-electric hybrid.

The third major requirement is that the discovery be 'useful.' There is actually a patent for non-useful articles (a 'design patent'), but a utility patent requires that the item be useful. Finally, the patent has to be filed for a 'patentable subject matter.' From the statute, that would be a 'process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.' There is some complexity when it comes to the idea of a 'software patent,' so much so that entire articles exist on the topic. Given that most of the gaming patent disputes have been over hardware, I will leave the software patent discussion for another time.

If you meet all of these requirements, the next big step would be to file a patent application. The application has a significant number of elements, but two of which are the most important to understanding the process. First, the application must disclose 'prior art.' Prior art are other patents that may be predecessors, in whole or in part, to the idea in the application. The second important element is the list of 'claims,' or the list of things you're asserting your invention does. The list of claims describes what is protected by the patent.

Once the application is filed, the process moves to what is called 'patent prosecution,' which is simply the back and forth between the patent office and the patent attorney over the specifics of the application. Typically, revisions may be made to the patent during this time, and the patent office may require certain ones. In addition to revisions, the patent office may dismiss some of the claims in the application from what will be the final patent, typically because they do not meet the requirements we've discussed. The most common reason for a claim being dismissed is that it is either obvious or not novel. It's important to note that dismissal of a claim based on the content of another patent does not mean the product is an infringement of the prior patent.

Once a patent is granted, the holder of the patent has the ability to license the product to others for production, sue for infringement, or even sell the entire patent to a patent holding company. It's important to note that not enforcing your patent rights, for example not suing those who infringe on the patent, can be seen as a failure to uphold the patent and can lead to the patent being negated. Moreover, other parties can sue to have a patent invalidated for a variety of reasons.

To take some of this and apply it to a gaming case, let's look briefly at the Goschy/Wii case. For those needing a summary, ex-Midway employee Goschy has filed suit claiming he basically invented the Wiimote. His claim is based, at least in part, on the filings found in patent 6,908,386.* He cites the Final Rejection and its use of his patent (6,545,661) as grounds for rejecting a number of the claims. As I noted previously, the use of a prior patent to reject claims is not evidence of patent infringement. However, the patent was issued on a number of the claims that were not rejected, and those claims make up the essential components of the Wiimote and Wii. It seems unlikely that Goschy's case for infringement will succeed on this point. Think of it this way: If Goschy had invented the mousetrap, and Nintendo invented a super duper mousetrap, then Nintendo could probably still get a patent, just not on a claim like "a mechanical device to trap mice." A claim like "a mechanical device to quickly kill mice" would likely be upheld.

Patent law is complicated. In fact, patent prosecution is the only specialty within the practice of law that requires its own specialized exam beyond the bar exam to be able to even practice in the area, for a combination of reasons including complexity and the necessary scientific background to be able to analyze these inventions. Hopefully this overview will help you understand a little more of what you read when these patent cases arise.

[*Patents are available to the public online. If you would like to look them up, go here, enter the validation text, then search the patent number. Most of these documents are under "Image File Wrapper."]

Mark Methenitis is the Editor in Chief of the Law of the Game blog, which discusses legal issues in video games. Mr. Methenitis is also a licensed attorney in the state of Texas with The Vernon Law Group, PLLC and a member of the Texas Bar Assoc., American Bar Assoc., and the International Game Developers Assoc. Opinions expressed in this column are his own. Reach him at: lawofthegame [AAT] gmail [DAWT] com.

The content of this blog article is not legal advice. It only constitutes commentary on legal issues, and is for educational and informational purposes only. Reading this blog, replying to its posts, or any other interaction on this site does not create an attorney-client privilege between you and the author. The opinions expressed on this site are not the opinions of AOL LLC., Weblogs, Inc.,, or The Vernon Law Group, PLLC. As with any legal issue that may confront you in a particular situation, you should always consult a qualified attorney familiar with the laws in your state.

This article was originally published on Joystiq.