IP Rights SIG/Patents
International Game Developers Association
Table of contents |
[edit] Patents
A patent is an exclusive right granted to an inventor for their invention. A patent owner is protected from anyone who may attempt to make, use, distribute or sell the same invention. When in possession of a patent, the patent owner can give, assign, license or sell the patent rights to others.
Patents have double-edged importance to technology users: they allow an inventor potentially to earn licensing profits from his or her inventions, and they represent a potential focus of litigation to anyone intentionally or unintentionally using patented technology without an appropriate license.
Many patents claim improvements to existing technology. Although a patent grants the owner the right to exclude others from using those improvements, it does not grant the owner any rights to use the existing technology on which it was based, whether alone or in concert with the patented improvement. Independent creation of a technology does not exempt one from liability for infringement on existing patents.
[edit] What Can Be Patented?
To qualify for patent protection an invention must meet certain criteria. An inventor must show novelty, utility, and non-obviousness of the item. Novelty requires that the item incorporate some feature that is outside the scope of existing knowledge in the particular technical area in which the invention spans. Utility refers to whether there is a practical use for the item. Non-obviousness requires that the patent contribute something new to technology as a whole. Once these criteria are met, governments can still refuse to issue a patent for an invention if its commercial exploitation is prohibited for reasons of public order or morality, or if the invention has been previously offered for sale or disclosed publicly.
In the United States, "any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof" that satisfies the aforementioned novelty, utility, and non-obviousness criteria might be patentable. Software per se is not patentable, but software as used to run a machine is; thus, patent claims related to software generally also include a general description of the machine (computer hardware) in which the software runs and the purpose of it. Some business methods are patentable as processes, as are some engineered or hybridised plant species. The "visual ornamental characteristics embodied in, or applied to, an article of manufacture" are also patentable, as designs. Nuclear weapons technology and other inventions against public policy are excluded from patent protection. In order to file for a patent, the inventor must provide documentation showing "reduction to practice", in other words that they have successfully demonstrated that their invention works. They must also describe at least one example (or "embodiment") of how they have done it, in enough detail that a similar expert could replicate their invention (although they would not be licensed to use it).
Similar criteria apply in the UK; however, genetically engineered species, medical methods of diagnosis or treatment, abstract methods of playing games, business methods, presentations of information, and computer programs are specifically excluded from patent protection. Designs are registered, rather than patented, in the UK.
Generally throughout North America and Europe, discoveries, laws of nature, ideas and theories, and inventions contrary to laws of nature (e.g. perpetual motion machines) cannot be patented and the subject of the patent must be suitable for application in some form of industry; industry being broadly defined to encompass any activity that is not purely intellectual or aesthetic.
[edit] Filing for a patent
The main steps of filing for a patent are:
- Identify an invention that could be patentable
- Obtain technical information from the inventor
- Draft a patent specification including claims for comments and approval
- File a first patent application to provide a first filing date
- Review search results
- File convention patent applications outside the country of first filing (within 12 months)
- Prosecute patent applications to grant
- Pay scheduled renewal fees to maintain the patents in force
From a first meeting with inventors to placing a patent application on file will take about 6 to 8 weeks. A prosecution time of circa 2 (UK) to 4 (US) years for obtaining patent grant would be typical in most countries. Obtaining patent grant in Japan takes considerably longer.
It is also the position that if the proprietor of a patent needs to rely on a declared priority date (which may be an earlier patent application filing date), the description in the priority application needs to contain an enabling disclosure before the filing date of the earlier application can properly accord priority to an invention claimed in a later invention. This follows case law, particularly in the United Kingdom.
[edit] Patent Pending
The terms "patent pending" and "patent applied for" refer to an actual pending application in the US Patent and Trademark Office. The term patent pending may also refer to a type of application called a provisional application that has been filed with the USPTO. In other words the term patent pending does not imply that the application has or will be granted, just that it has been filed by the company. Companies that misuse these terms are subject to sanctions under US law because misuse of the terms is viewed as an attempt to deceive the public by claiming an aura of IP protection that the item does not actually have. For further information;
http://www.uspto.gov/web/offices/pac/doc/general/faq.htm#a1
[edit] What is in a Patent Application?
Patent claims define the scope of a legal right, giving the Patentee the right to stop others from committing infringing acts that fall within the scope of the claims. In order to be awarded this "monopoly", the inventor must disclose his invention in the form of the patent description such that details of how the invention is worked are placed in the public domain. Thus, after the patent expires, anyone is then free to make use of the information disclosed. The question therefore arises as to how much information should be included in this description.
Generally the claims, drawings and description of a patent application should include sufficient detail to teach an average practitioner in the inventor's field of discipline how to implement the invention. From a strategic perspective, it often proves true that the more limited the scope of the claims, the more likely that an Examiner will grant the patent but the broader the scope of the claims, the greater the protection.
Most national statutes amongst European countries, which are consistent with the EPC and the PCT, state that the specification of an application shall disclose the invention in a manner clear enough and complete enough for the invention to be performed by a person skilled in the art. A patent once granted may also be revoked if it is found that this condition has not been satisfied.
When drafting a patent specification intended for a national Patent Office Examiner in Europe, such as the British Examiner, it is essential to presume that its intended addressee (a person skilled in the art) is of no more than average knowledge and competence and that this person must not be required to exercise any invention in carrying out the instructions given in the specification. When a patent specification is being used as the basis for an international filing program, it is necessary to take account of the requirements in the countries of interest and, in particular, to draft the specification to meet the highest level of requirements.
Statutory provisions in the United States says that the specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art which it pertains, or with which it is most nearly connected to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out this invention.
Thus, in the United States, the written specification must meet three written requirements, in a much more stringent fashion than in Europe:
- It must be sufficiently descriptive to enable one skilled in the art to practice the invention. This is sometimes referred to as the enablement requirement in the United States and is substantially the same as the sufficiency requirement in Europe.
- It must contain a written description of the invention. This is sometimes called the written description requirement.
- It must disclose the best mode of practising the invention contemplated by the inventor. This is sometimes called the best mode requirement.
On reading a granted patent it is important to realise that the description was filed before the claims were decided on and approved. In many cases some claims are rejected, resulting in a description more broad than what was actually allowed for the patent. Therefore the claims are the first area to review in determining what the patent does or does not cover, with the description available to interpret what is meant by the particular claims allowed.
It may take as much as two or more years to have an application decided, so it also good to keep in mind that even if existing patents may not seem to cover what you are researching, there may be patents about to be granted that would be relevant. Although many pending applications in the US are now available for searching and review at USPTO's web site, this does not include all of them.
[edit] How much is it going to cost?
Initially, a major factor will be the complexity of the invention, in order to draft a patent specification including claims. Attorney's fees for patent specification will usually cost between £ 1,000 and £ 10,000, and possibly much more depending upon the technical field of the invention. In the particular field of software inventions, it is safer to budget between £ 5,000 and £ 12,000.
Thereafter, cost will be determined to a greater extent by the number of countries in which protection is required. The total prosecution cost from start to finish is typically in the region of £ 3,000 to £ 5,000 per country, excluding drafting the patent specification itself - the initial major factor referred to above. Obtaining patent protection in the United Kingdom, the United States, Japan, Germany and France could cost £ 25,000. International applications under the PCT defer costs by little more than a year, but national phase entry is still required, at which point the total costs from start to finish apply as described above.
Patent-related attorney's fees in the United States are comparable after adjustment for prevailing exchange rates. Thus, to draft a patent specification software could cost between $10,000 and $20,000, with an additional $10,000 in prosecution fees per country.
National governments typically assess fees for filing, issuing, and renewing patents. In the U.S. these fees depend upon the complexity of the patent application and can range from under $500 to several thousands of dollars; US fees are halved for individual inventors and small business owners. Keep in mind that each time a response or filing update is needed there will be more fees. The UK offers substantially lower filing costs but imposes an increasing annual renewal fee of £ 50 to £ 500 after the first five years of protection.
[edit] The Cost of Infringement
Patent disputes center on two issues: the validity of the plaintiff's patent, and whether the defendant infringed.
In the US, patents are presumed valid and the burden of invalidating the patent rests on the defendant. Notwithstanding this burden, the plaintiff incurs substantial risk by filing suit: his or her patent may be invalidated, destroying its commercial value.
Patent litigation can be quite expensive, with one US source estimating monthly costs per party a minimum of $15,000 to $20,000 for the typical two-year duration of a patent lawsuit. Typically the owner of a patent litigates to obtain money, and the defendant wants to get on with business as soon as possible; both parties have a strong interest in settling before trial.
If a US court finds that the defendant infringed the plaintiff's patent, the court can determine a reasonable royalty and order the defendant to pay that royalty to the plaintiff; alternatively, the court can award the defendant's profits to the plaintiff. In cases of intentional infringement, the plaintiff could be awarded treble damages and attorney's fees. The court might also or alternatively issue an injunction prohibiting the defendant from using the plaintiff's patented technology.
[edit] Do all patent agents have the same qualifications and experience?
No. Technical background varies significantly. It is important to find an agent who has some experience in the field in which you are seeking to obtain a patent. When seeking patents abroad it is important to find an agent familiar with the patent laws of the foreign jurisdiction in question.
[edit] International Differences in Patent Protection
In both the US and EU member states patents are difficult and expensive to obtain, and thus play less of a role for the high-speed gaming industry than trademarks and copyrights. Some countries grant a similar type of protection under a less exacting standard for "utility designs." If a patent is obtained, however, the right to license its use is exclusive to the owner.
Differences between and among EU member states and the US do exist. A few examples follow; this list is by no means comprehensive.
In Europe, patent applications are made public 18 months after first filing. In the US, the inventor has the option to keep their patent application secret until the patent issues, the rationale being that if the patent never issues, the inventor will be entitled to Trade Secret protection.
Germany treats the issues of a patent's validity and its infringement separately (obscuring the ability to claim invalidity as a defence to infringement). England, however, is a unitary system, where the issues can be considered concurrently. Another example is the fact that there appears to be no patent reciprocity in England, so that non-English persons or entities will have to apply for individual protection.
As the national differences in patent law are myriad, one should consult with qualified agents and attorneys before and whilst undertaking to obtain international patent protection.
Perhaps the most significant area of difference between international patent laws is covered in the next section.
[edit] On Sale and Public Use Bars to Patenting
Game developers pursing patents should be aware of two important mistakes that can lead to invalidation of their patent at a later date or prevent their patent from being issued at all. From 35 U.S.C. 102(b) we learn that no invention can be patented in the US if it has been "on-sale" or in "public-use" for more than a year before a patent application is filed. Importantly, this includes efforts to sell the invention as well as actual sales. Be aware that licensing inventive technology without the appropriate safeguards can also be considered public use or sale of the invention. There are some types of licensing and use that are permitted. These types of use include the "experimental use" negation of the 102(b) bar. This negation, simply stated, is that some types of use or sale are allowable if they are for experimental purposes. This is not a defence to rely on. It is difficult to prove and often unsuccessful. Clearly, the best way for an inventor to treat the 102(b) bars to patenting is to do nothing that can appear to be a public use or sale. Inventors should guard their inventions with secrecy until the time of patent application. This includes no attempts to sell, license, loan out, or use the invention until the patent application is filed.
In many non-US jurisdictions there is not even one year after the invention being "on sale" or in "public use", and the inventor immediately forfeits their right to patent the invention.
