That’s Patentable? The Far-Reaching Definition of an “Invention”

U.S. patent law provides that “Whoever 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 therefor,” 35 U.S. Code §101. This leaves open a broad range for potential patent protection. The categories of a “machine, manufacture, or composition of matter” provide for many traditional concepts of an invention, such as devices, chemicals or other physical objects. Focusing on these physical items as being invention ignores the “process” category. The process (or method) type of patent has been used to cover a broad range of technologies – from manufacturing techniques to medical procedures. It is this category’s open-endedness which has presented a number of extraordinary patent opportunities as well as a fair share of headaches.

Concerns that method patents may be used to cover broader concepts than is appropriate has caused many to struggle to determine what types of technologies should be allowed to receive patents. The myriad court decisions and United States Patent and Trademark Office rules in the past few decades alone have created a complicated thicket of patent eligibility rules. Despite these issues some interesting ideas and non-traditional concepts have been granted patents. While some might argue that such patents are not appropriate, the Patent Office’s willingness to grant such patents introduces some leeway into determining what might be patentable and that might otherwise be overlooked.

In some cases, patents have been issued for processes used to play card games. One patent that has reached a particular level of notoriety (or infamy) is US 5,662,332. This patent covers a method of playing trading card games where each player constructs a deck of cards. The claims include coverage for “designating the [card] being brought into play by rotating the [card] from an original orientation to a second orientation.” Further claims cover a rotating, or ‘tapping,’ to make players are aware the trading card is in use.

Patent protection has also been awarded to methods involved in the presentation used in computer games. Patent US 6,935,954 was awarded for a sanity system used in a video game where the “character may experience hallucinations as a result of the sanity level.” During game play, the sanity level of the game character is modified based on a character reaction and an amount of character preparation. As the game continues, game play is impacted by varying game effects according to the game character sanity level.

In another patent, US 8,082,499, the graphical interface for an interactive dialog is presented. A dialog choice indicator is shown which has a number of directional choices. Dialog responses corresponding to a particular emotion are then provided in a consistent location/direction.

In 2014, the U.S. Supreme Court decided CLS Bank International v. Alice Corp which invalidated claims that were determined to be drawn to an abstract idea. In response to this case, the USPTO has adjusted their stance regarding patentable subject matter and has rejected many applications held to be too “abstract”. However, this has not prevented the Patent Office from still issuing patents directed to some intriguing methods.

Patent US 8,920,245 is directed to a video game award method. According to the claimed method, the player is awarded a digital gaming object while playing a first game and is then able to use the digital gaming object within a different game.

A language-based video game method is protected by US 8,825,492. In this method, the game display shows an animated portion of a human head related to speech to show a pronunciation of selected text. The text is then transformed into a non-textual form which can be used by the avatar to overcome at least one challenge, for example, a letter of the alphabet may be transformed into a rope which can be used to overcome a rock climbing challenge.

In another post-Alice patent, protection extends beyond graphic displays. US 8,721,415 covers a computer-based solitaire game with stack-based pay table. The player is provided a payout which is calculated based on a per-card payout award and the actual number of cards transferred during the game.

These examples demonstrate that patentable inventions can be made in non-traditional fields. Simply because an invention is not incorporated in a physical object, such as a motor or a chemical composition, or relates to an industrial process, doesn’t mean that patent protection is unavailable. While care must be taken to ensure the claims comply with patentable subject matter restrictions, great opportunities still exist for patenting concepts which might otherwise be overlooked. 

So, You've Just Read About Someone Getting a Patent

A day does not go by without a new article about a company or individual obtaining a patent. A company itself may be behind an article because it wants to hype its technical achievements, as was the case with “Powerhouse Dynamics Gets Patent for Appliance Monitoring Technology.” Or someone may publish a piece to report on his patent “sleuthing,” see “Apple Patents A Smarter, More Accurate Wrist-Based Activity Tracker.”

Understanding some basic patent concepts will help you interpret this kind of “news.”  It will also help you in discerning what your competition may be up to with their (possibly) patented new technology.  Some definitions are in order:

According to 35 U.S.C. 271, “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States,….infringes the patent.”  This is often referred to as a “negative right” in that a patent provides the patent owner with the ability to prevent others from making, using, selling, etc.  As to determining what has been patented, i.e., what is protected, one looks to the patent claims.

A patent, according to 35 U.S.C. 112, includes “a written description of the invention, and of the manner and process of making and using it, in … terms as to enable any person skilled in the art … to make and use the same.”  In addition, the specification “shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”  If you have ever read a patent, those numbered paragraphs at the end of the description are the claims and, in some cases, may be where you stopped reading because they can be, at times, inscrutable.

The claims define the “metes-and-bounds” of the invention and one looks at the claims to determine whether infringement has occurred.  The claims are central to understanding the protection provided by the patent.  The interpretation of claims, however, has filled volumes of court decisions and is beyond the scope of this article.

In the United States, patents issue every Tuesday and are assigned a patent number.  As of this writing, Patent No. 8,671,461 appears to be the highest number to date.  An issued patent gives the owner the rights of exclusion outlined above.

Additionally, every Thursday, pending patent applications are published per the American Inventor’s Protection Act which requires publication of some patent applications eighteen months after their earliest effective filing date.  Not all patent applications, however, are published. These publications are given a number in the form of 20140075637, where the first four digits indicate the calendar year.  Published patent applications, in and of themselves, do not provide the owner with any exclusionary rights although they may function to put potential infringers on notice (an issue not being discussed here).

So, returning to the two online articles above, we note that the first one tells us that “Powerhouse Dynamics has been awarded a patent for a technology which can remotely monitor appliances to gauge how efficiently they are operating.”  This tells us that they are talking about an issued US patent.  One could then look to the claims to get some idea of what was being protected.

The second online article indicates that Apple has patented some technology, at least according to the title.  Reading further, however, it states that “Apple has applied for a patent for an improved wearable pedometer design….”  Clearly, this is referring to a pending patent application.

There is, however, information to be obtained from reviewing a published application.  First, patent applications may reflect the technical area a company is researching and indicate where new products from that company may be targeted.  By looking at the published claims, one can get a sense about what aspect of the invention the applicant is trying to protect.  This could be different from the characterization provided in an accompanying article or press release.  In addition, once a patent application has published, its progress through the Patent Office can be monitored by third parties who can then possibly discern the ultimate scope of coverage as based on the claims.

I have attempted to provide the reader with an understanding as to the differences between an issued US Patent and a US Patent Publication and how reviewing the claims will give an indication of the protection obtained or being sought, respectively.  It must be strongly emphasized, however, that one should only rely on a claims interpretation provided by a qualified attorney, as the claims construction ultimately relies on more than just the words in the claims.  Any business decisions, and certainly conclusions as to non-infringement, must be based on a qualified analysis.

What is "Patent Marking?"

Patent marking is a way for a patent owner to let the public know an article is believed to be covered by one or more of its patents.  This is referred to as “constructive notice” to the public that the article may embody patent rights.

What Purpose Does Patent Marking Serve?

Some people mark their products with applicable patent numbers to discourage copying: “Hmm – this company went to the trouble of obtaining patents.  They may also be willing to enforce those patents.”  

Others use it as a marketing tool:  “Look!  The latest in patented technology!”

But the main legal advantage provided by proper patent marking has to do with the amount of damages a patent owner can seek in an infringement suit.  If an infringer was given constructive notice of patents through a properly marked article, all sales of its infringing articles may be used in calculating money damages.  If the patented article wasn’t marked, the patent owner may only seek damages dated from when the infringer was given actual notice of the patents.  

What Does Patent Marking Look Like?

Marking includes the word “patent” or the abbreviation “pat.” followed by the relevant patent numbers.  (Some precede this with “U.S.” since different countries have different requirements).  This notice can be printed or stamped directly on an article, or printed on a label attached to the article.  If the article is too small, the notice can be printed on packaging for the article or on documentation that ships with it.

What If Lots of Patent Numbers Apply?

Patent owners now have the option of providing a URL which links to a list of patent numbers associated with a given article.  Such a notice might look like: “Patent www.CompanyABC.com/patents”.  This virtual marking makes it much easier to provide current, up-to-date patent information to the public.

When Can a Product Be Marked or Described as “Patent Pending?”

As long as a relevant provisional, utility, design, or plant patent application has been filed and remains pending, the article may be marked or described as “patent pending.”

How Big a Problem Is an Out-of-Date Listing of Expired Patents on an Article?

As long as the expired patents used to cover some aspect of the article on which they are listed, it’s okay if they remain.  A periodic review of all patent markings is not only a good way to facilitate the removal of expired patent numbers, but also to enable the addition of newly issued patents.