KSR International Co. v. Teleflex, Inc.
U.S. Supreme Court, April 30, 2007

While technically not a video game case, this landmark Supreme Court case just (expectedly) rocked the patent world. The technology: drive by wire for automobiles. The issue: when is an invention nonobvious? The answer: don't know for sure, but we DID learn a little more about when an invention IS obvious--whenever the invention is merely the combination of known elements with predictable results.

This case will have a ripple effect in the patent world, regardless of technology area. No longer is the Federal Circuit's "Teaching, Suggestion, Motivation" test the BMOC. While the TSM test is one way to determine obviousness, it is by no means the ONLY way to do so. The KSR case is a welcome relief for all those who have been advocating that it's too easy to get a patent under the Federal Circuit's TSM regime, but at the same time the post-KSR era will experience higher prosecution costs and less certainty regarding patentability of any invention (at least in the short term, until some clarity is provided through subsequent caselaw).

How does this apply to video game patents? Folks have been criticizing patents for years by saying that the USPTO is granting patents to combinations of known ideas and concepts, including game play patents where the claimed "invention" is a combination of known elements found in previous video games. Such patents were being granted because there was no prior art that explicitly or implicitly suggested the combination, even when each of the combined elements was being used in its normal manner, i.e., providing predictable results. No longer will that be the case. Instead, the price of poker, i.e., the "inventiveness" required to get a patent, just went up, and more will be required of game developers before a patent will be granted for a game play concept.

There will be many who relish in the nuances of the KSR opinion's text, and provide lengthy analysis regarding its mantras, so I won't go into all that here. But I will provide some notable quotes:
  • "If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability."
  • "a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions."
  • "Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility."
  • "A person of ordinary skill is also a person of ordinary creativity, not an automaton."
The entire opinion may be found here. Happy reading!
People often ask the same introductory questions when they first start seeking patent advice and counsel, and are often concerned about getting billed for the attorney's time just to learn the answers to a few basic questions. I typically don't bill for such initial consultations and introductory questions (I say "typically" because, as attorneys, we usually don't make absolute statements... ;)

The proof is in the pudding, right? So we have started a new feature here at the Patent Arcade: Patent FAQs. The Patent FAQs should answer your initial questions to help you decide whether to consult a patent attorney or not. If you have a questions that's not on the list, then send us an email and we'll endeavor to add it.

Have a question that is not covered here? Send us an email, and we’ll endeavor to keep this FAQ updated. Keep in mind that this is not legal advice, as each scenario factually differs. Always discuss your specific situation with your own attorney. You can reach us at info (at) patentarcade (dot) com with further questions.

I think I invented something and I’d like to patent it. What do I do now?

Talk to a patent attorney. Before you make any public uses or disclosures of your invention, before you offer it for sale to anyone, and before you publish anything describing your invention, talk to a patent attorney, as each of these actions can have a negative impact on the patentability of your invention. If you’ve already done one of these things, it is even more imperative that you talk to a patent attorney to determine whether you still have rights to your invention, because there is only a 1 year grace period in the United States to file your patent application after you’ve done one of those things.

What will a patent attorney do for me?

A patent attorney will discuss the legal requirements that must be met before the United States Patent & Trademark Office (USPTO) will grant you a patent, and will also discuss your invention with you to learn about the invention so that he or she can draft a patent application and file the patent application on your behalf in the USPTO. A patent attorney may also assist with a "prior art" search, where previous patents and other documents are search to see if anyone has already created the same or a similar invention as you.

My invention is complicated. Will an attorney be able to understand it?

In order to practice patent law, patent attorneys must pass a special Patent Bar exam administered by the USPTO. In order to be eligible to take the Patent Bar, an attorney must have a scientific, engineering, or computer science degree. In addition to having a technical undergraduate degress, many patent attorneys worked in industry for before going back to law school. For example, Ross Dannenberg was an Information Systems Manager for Carnival Cruise Lines for two and a half years after getting his bachelor's degree in computer science before going back to law school.

Should I do anything to prepare to meet with the patent attorney? What level of detail and information will a patent attorney need?

A patent must describe an invention with enough detail so that someone of “ordinary skill in the art,” after reading the patent, can make and use the invention. You will therefore need to provide enough detail as if you were describing your invention to a competent person in your own field of work. A patent must also describe the “best mode” contemplated by the inventor of making and using the invention, so make note of any special tricks or modifications that need to be performed or made in order to get the invention to work best. The more of these types of details you can gather ahead of time, the more efficient the patent drafting process will go.

I’ve seen a patent before, and it had a bunch of drawings. Where do those come from?

Ideally, from you. While your patent attorney may refine the drawings and add additional drawings to help describe and illustrate your invention, you (the inventor) are in the best position to create rough (napkin) sketches or drafts of diagrams, flow charts, data flow, schematics, etc.

There are a bunch of numbered sentences at the end of a patent. What are those?

The numbered sentences at the end of the patent are the claims. Claims are required to be only one sentence, regardless of length, so they can be a little confusing. However, the claims are the “legalese” that define the boundaries of your invention, and specify what it is that others are not allowed to do. So if anyone performs every element of at least one claim in your patent, then that person infringes your patent.

Who writes the claims?

Given their importance in determining infringement of the patent, the claims should be drafted by a patent attorney. Minor variations to claim language can seriously affect the enforceability and scope of the claims, so anyone other than a patent attorney is discouraged from writing their own claims so that they don’t inadvertently give up some patent rights. Inventors are encouraged to discuss what they consider necessary and inventive aspects of their invention with their patent attorney, and then the patent attorney will craft and tailor the claims to maximize your scope of protection.

This sounds expensive. How much will preparation of the patent application cost?

Keep in mind that a patent is property and, like any other property, is an investment. Most attorneys bill by the hour, or some fraction thereof. The amount of time it takes to prepare a patent application naturally depends on the complexity of the invention, the level of detail provided, preparation by the inventor, and the number of claims required to adequately protect the invention, among other factors. Patent applications can cost $5,000 to $20,000 or more in attorneys’ fees to prepare and file, depending on a variety of these factors. An "average" complexity application is usually in the $10,000 - $15,000 range. Additional fees may be charged if a professional draftsman has to prepare drawings from the inventor’s or attorney’s sketches, typically under $1,000. There are also filing fees when you file the application in the USPTO.

How much does filing cost?

The USPTO charges various filing fees based on whether the applicant is considered a small or large business entity, and also based on the number of claims in the application. For a large business entity, filing fees about $1000 + extra claims fees if your application concludes with more than an allotted number of claims. For a small business entity, filing fees are about $500 + extra claims fees. A full schedule of fees is maintained by the USPTO.

Sounds like I can save money by doing this myself, right?

Some inventors do prepare their own patent applications and file them in the USPTO themselves. This is known as representing yourself "pro se". However, even though inventors CAN represent themselves does not necessarily mean it's a good idea. Patents prosecuted pro se are often difficult to enforce against infringers because of various problems, mistakes, or oversights made during prosecution, e.g., drafting the claims too narrowly, drafting the claims so that no single legal entity can infringe them, not describing the invention in enough detail to satisfy the enablement and best mode requirements, etc.

We recognize that many small businesses and startups are on a budget, and we try to work with each client within their financial means, but there is a threshold minimum amount of money it takes to properly prepare a patent application. One way that some of our clients save money is by preparing the first draft of the "Detailed Description" that goes in the patent application. The Detailed Description is where you describe how to make and use your invention with enough detail so that someone of ordinary skill in the art could build the invention without undue experimentation. Think of the Detailed Description as a document that, if you had to hand it off to someone else, that other person could make and use the invention based on the Detailed Description without having to come back and ask you ANY questions. In fact, when preparing the Detailed Description, assume that the person you hand it off it is not even allowed to ask you any questions or get any clarifications. That should put you in the right mindset if you do decide to prepare the document yourself.

How does the USPTO determine if my invention is patentable?

An invention is patentable if it is new, useful, and nonobvious. A patent examiner will be assigned to your case, and that person will search for “prior art” such as previous patents, publications, white papers, journals, magazines, known products, etc., to determine if your invention is patentable. The patent examiner will analyze the prior art to determine whether anyone else has already invented the same thing (i.e., your invention is not new), or if your invention is a specifically suggested combination of things that have been done before (i.e., your invention is obvious). The USPTO will provide a written report, referred to as an Office Action, that details its reasoning for why or why not you should receive a patent for your invention.

How long will it take to receive an Office Action? What happens next?

Application pendency varies, but the USPTO is notoriously backlogged. Expect to wait at least 2-3 years for the USPTO to send a first Office Action. When you (or your patent attorney) does receive an Office Action, your patent attorney will analyze the arguments made by the USPTO, discuss them with you, and then craft written arguments and or claim amendments in response to the Office Action. This is the other major cost associated with obtaining a patent, and can cost $2,000 - $4,000 or more to respond to complex Office Actions.

The USPTO has determined my invention is patentable… now what?

When you receive a Notice of Allowance from the USPTO, you have three months to pay the Publication and Issue Fees ($1,700 as of this writing). It will then take the USPTO 2-4 months to assign a patent number to you and publish the patent.

The USPTO has determined my invention is not patentable. Do I have any other options?

You can always appeal a rejection by the USPTO. The first step is to appeal the examiner’s decision within the USPTO to the Board of Patent Appeals & Interferences (BPAI). If the BPAI agrees with the examiner, then you can appeal further to the federal courts of the United States.

Ok folks, the technical difficulties appear to be resolved (for now, at least). Sorry to anyone who had trouble with the RSS feed in the meantime...

From the April 2007 ABA Journal, citing the U.S. Department of Justice special report:

Of the 7,445 vicil intellectual property lawsuits filed in 2002:
  • 140 (1.9%) made it through trial and received a trial verdict.
  • In 83 cases (59.3%) the plaintiff won.
  • In 53 of the 83 cases, the reward included money.
  • Overall median damages award was $965,000
  • Median damages in patent cases was $2.3M
  • Median damages in copyright cases was $159,000
  • Median damages in trademark cases was $84,500
As everyone knows by now, Sony settled with Immersion for about $150M. So while the primary issues have been decided, there is still a little cleaning up to do. Namely, there was a third party involved in the litigation, Internet Services, LLC (ISLLC), which claimed it had some rights in the Immersion patents via a license from Immersion, and thererfore ISLLC should be entitled to some of that $150M. The district court initially dismissed all of ISLLC's claims, and ISLLC appealed. Today the Federal Circuit affirmed the district court's decision to dismiss ISLLC's claims, confirming that ISLLC lacks standing to sue Sony based on its limited license to the Immersion patents.

The full decision can be found here.
While not directly related to video games, this case may have some applicability to the game world, given the convergence of service providers and MMOs (think Linden Labs). In a solid win for the service providers/content providers (think YouTube or MySpace, or Second Life!), a federal appeals court has largely rejected Perfect 10's claim that a service provider violated laws by linking to sites that improperly posted its images. The March 29, 2007, decision from the Ninth Circuit Court of Appeals affirmed the lower court's ruling that CCBill "reasonanly implemented" a noninfringement policy under the DMCA, and was therefore not liable for widespread copyright infringement by numerous web sites that it linked to.

The case is Perfect 10 v. CCBill, __ F.3d __ (9th Cir. March 29, 2007).

Read more here.
< Previous     Home     Next >

Get the Patent Arcade App

Get the Patent Arcade App
Available now for iOS

Search This Blog


Buy your copy today!

Buy your copy today!
ABA Legal Guide, 2d Ed.

Ross Dannenberg

Scott Kelly

Scott Kelly




Data Analytics

Copyright ©2005–present Ross Dannenberg. All rights reserved.