patent question

[der_kluge]

I can't give away any details, but I have a question about a patent. In the U.S. patent office site (just do a google search on U.S. Patent office), you can search by patent number. In the description of a patent number, it has a section for "what is claimed". I want to do something similar to an existing patent, but it's not clear to me if what I want to do is the same as what the patent describes, or merely similar.

For example, if the "what is claimed" describes something like this:

1) A steel-frame with four wheels, four doors, a sunroof, and an engine that consumes gasoline such that it propels the invention forward when a pedal is pressed.

2) as claim 1, and is colored black.

I want to do something that is almost exactly like claim 1, but is a different color.

Is that a patent infringement?

Any patent lawyers here?

 

[Happy Funball]

Well, I am not a patent lawyer, but in a previous lifetime I did take the patent bar (a real... interesting... test, let me assure you).

I don't quite remember the terminology, but no, you can't just add color to something and claim a different patent.

It needs to be something that is not obvious to a 'technician' in the field. But, if that condition is met, you can, in principle, take a previous patent and claim "Everything in Patent X plus this non-obvious thing".

Damn, now I wish I had my notes. Grrr. I should have just waited for a real patent attorney. Go ahead and ignore me

And as an interesting side note, making this slightly topical, has anyone ever thought about patenting a game mechanic? Like the d20 system? I mean, it would be thousands of dollars wasted even if you did manage to get a patent, but wouldn't it be COOL!?!

Any real patent attorneys want to comment on that?

 

[jmucchiello]

IANAL.

The prior post is correct. You have to come up with something a person in the field would not consider obvious. Changing something's color is obvious. Without details there's not much more to say.

You cannot patent game rules. You cannot patent an algorithm. You can patent a computer that performs an algorithm. This means that if you come up with the most obvious way to write such a program, you can gain patent on the algorithm itself since no one can make a similar program. But I don't see how this would apply to game rules. Obviously you don't need the computer program to play most games so since there is no "invention" (aka a thing) there is nothing to patent.

Of course, these days the u.s. patent office is a rubber stamp agency so you might succeed if you tried but if would cost you on the order of $10,000+.

 

[Glaurung]

I am not a patent attorney, but I am studying to be a patent attorney. Luckily for you, my patent law exam is in a few days and I have been studying.

Now then, in you claim examples, the 2nd claim is called a dependent claim and the 1st is an independent claim. They are both separate, and if your invention meets all the elements for either claim, you are infringing. So in your example, the a blue vehicles of the described type would still infringe claim 1, but a back one would infringe claims 1 & 2. Even if you don't match all the elements exactly, you still have to worry about the doctrine of equivalents, which I will not get into here. If you really have an invention and you have concerns you may be infringing, you should get an opinion letter from a patent attorney. You'll be happy that you did if you ever get sued later (not having one when you are aware their might be a problem with a similar patent is akin to purposefully blinding yourself and may cause increased damages for willful infringement).

As an aside, you cannot patent a gaming mechanic. If you could, Hasbro would have a patent on d20 and the Open Gaming License would be an impossibility.

-Michael Gill

 

[der_kluge]

Very interesting. No, it's not a game mechanic, it's a physical thing, but from what I can tell, it does match claim #1 almost exactly.

Here's perhaps a better analogy:

Claim 1: Invention is a book
Claim 2: Invention is claim 1, and is a Romance novel.

I want to write a science fiction book. But, is still a book. And, according to Glaurung, would still constitute an infringement on claim 1.


And just for the record, while I do have some questions, I will pursue actual legal advice, so don't concern yourself with thinking I'm going to hold you to what you're saying.

Given that, what are the legal requirements for being able to produce something that matches claim #1? I assume I would have to contact the company that owned the patent? And, they could charge me royalties to produce my "science fiction" book. Could they deny me the ability to produce my "science fiction" book?
If I produce a "science fiction" book, could I produce my own patent that had the same as claim #1, but then claim #2 was "as claim 1, but is a science fiction book"? How much does a patent cost?

Sorry for all the questions.

 

[Glaurung]

Look at the 1st claim again. Does it say in the first line " A science fiction book comprising " or "A science fiction book consisting of " a blah blah and such and such?
If it says comprising, it refers to the elements mentioned [A+B+C] plus whatever additional elements are added. In such a patent, if you meet all the elements, even if you have additional elements, you will be infringing. That does not mean you cannot pursue your own patent however. Know that if you do end up with such a patent, (and patentability is too complex-consult a lawyer), you will need a license from the other patent holder to produce your invention without infringeing.
If the language is "consisting of," then if you have elements beyond those described in the claim, you will not be infringing.
If the language of the patent is "consisting essentially of," then new elements may be added so long as they do not change the basic nature of the invention.
To patent the invention, it must be novel, non-obvious, and have utility. Utility isn't much of a test, and obviousness is too complex to explain here. For novelty, remember-do not sell (or offer to sell) the invention more than 1 year before you file for a patent. If you need to test the invention (ie, it is not quite ready yet) but you have a prototype, start preparing to file and test it yourself. If you give it to friends to use or something, this can affect your patent.

 

[pogre]

Now, I am a lawyer, but not a patent attorney. Which means I am more or less a layman for the sake of this discussion. It was my understanding that WOTC had patented the Collectable Card Game Mechanic.

As an aside, you cannot patent a gaming mechanic. If you could, Hasbro would have a patent on d20 and the Open Gaming License would be an impossibility.

Isn't that what they did?

In as much as I can answer my own question - I don't think Hasbro has ever tried to enforce this patent or extract royalties from others as they pretty much control the remaining CCG market.

What do you think Glaurung? This is purely hypothetical - so no unlawful practice going on here my friend.