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. 

Is Your Trademark Registration Stuck in the Past? A USPTO Pilot Program May Allow You to Modernize It

On Sept. 1, 2015, the United States Patent and Trademark Office (USPTO) rolled out a new pilot program that may help trademark registrants breathe new life into older registrations. 

Normally, once a trademark has been registered for particular goods/services, it is not possible to later amend those goods/services beyond the scope of the current identification.  But technology evolves, and goods or services may be phased out in favor of modern counterparts.  In the past, a registrant for a mark applied to outdated goods/services had to file a new application, thus giving up an earlier date of use.

Under the new pilot program, a registrant may petition the Director of the USPTO to amend the respective goods/services beyond the scope of the current identification.  But, the petitioner must show that it no longer uses the respective mark with any of the original goods/services and that the newly recited goods/services are the result of newly evolved technology in the manner or medium by which products and services are offered for sale or provided to customers.  The registrant must delete the old, original goods/services in favor of the newly evolved goods/services.

This pilot program is not available to those whose applications are still pending.  Also, it is not available to those who continue to use the subject mark with some or all of the original goods/services; registrants who use the mark on “old” and “new” goods/services must file a new application for the “new” goods/services.

The petition itself has certain specific filing requirements, including a request for amendment, fees, specimens, and dates of first use of the mark with respect to the amended goods/services.  The petition must be filed through the Trademark Electronic Application System (TEAS).  The procedural details can be found on the USPTO web site, and registrants unfamiliar with practice before the USPTO are recommended to rely on the services of an experienced trademark attorney.

In announcing this pilot program, the USPTO has suggested it is proceeding with caution to avoid causing harm to other users of a relevant mark.  Before an amendment under the program is approved, an examining attorney must perform a new search for conflicting uses.  Petitioners must agree to not file an affidavit or declaration of incontestability under §15 of the Trademark Act as to the amended goods/services for a period of five years from the amendment.  Also, once an amendment has been approved, it will be published by the USPTO and third parties who believe they may be harmed by the amendment will have a thirty day period in which to comment.

The USPTO has provided on its web site a number of example amendments that would be acceptable under this pilot program, as well as some that would not be allowed.  Key points to keep in mind are that the original goods/services are no longer in use due to the evolution of technology and that the new goods/services must pertain to the same subject matter as the original. 

As an interesting example, the USPTO points out that “streaming of audio material in the nature of music” in International Class 38 would not be an acceptable replacement for “phonograph records featuring music” in International Class 9.  The proposed use is to identify a telecommunications-provider service as opposed to identifying the source of content.  “Providing on-line music, not downloadable” in International Class 41 would be an acceptable amendment in this case.

In an era of rapid technological evolution, the USPTO’s pilot program offers trademark registrants a useful tool for preserving valuable rights.

Consider Design Patents as One Mode of Protection for Product Appearance

In the world of industrial design and branding, the appearance or look and feel of a product can be subject to various forms of intellectual property (IP) protection.  Copyrights and trademarks usually come to mind when considering the appearance, imagery or look and feel of a product, but design patent protection should not be overlooked and can provide an important avenue for protection.  The saga of the cellphone litigation wars has brought to greater prominence the use of design patents on product appearance.

As stated in the patent statute, a design patent can be obtained for "a new, original and ornamental design for an article of manufacture."  Most products are certainly articles of manufacture, and the appearance of a product or portions of a product or its decoration can be the subject of a design patent.  Static and dynamic graphics and logos as displayed on a cellphone screen or other display may also be the subject of a design patent.

One form of IP protection does not exclude the other forms.  Often, design patents, copyrights and trademarks can be used in concert to protect aspects of product appearance.  As an example, a product shape may be design patented and also trademarked if the shape or trade dress of the product serves to identify the product source.  Or a product shape may be both copyrighted and design patented for its ornamental or artistic appearance.

A practical benefit of a design patent is the relative ease of obtaining one at relatively low cost.  Examination of design patent applications by the United States Patent and Trademark Office is less than rigorous and most applications proceed to grant.

While a design may be subject to both patent and copyright protection, design patents offer benefits not available for copyrights.  One notable benefit is that a design patent can be infringed with no proof of copying as required under the copyright law.  A patented design is infringed if to an ordinary observer an accused design appears substantially the same.  Another beneficial difference is that the fair use defense is not available to an accused design patent infringer, as it is for copyrights.

One should therefore consider design patents as one mode of protection for product appearance as well as copyright and trademark modes.