Possible Rules Patent?

[slaughterj]

A slight tangent to the conversation:

Even if WotC were pursuing a patent for aspects of 4E, and even if they had solid legal grounds for obtaining such a patent, they still might not get one.

I was having a conversation last week with my father-in-law, who works in medical technology. He told me (and, I acknowledge that this is second-hand word, at best) that the U.S. Patent Office has prioritized handling patent applications that are related to homeland security, and de-prioritized handling all other patents. In his words, "if you're not working on homeland security, you just don't get a patent these days."

If this is true, a game patent would likely find its way to the bottom of the priority list.

That seems highly unlikely, given the breakdown of patent examiners into various fields, etc.

 

[slaughterj]

And you've been an attorney in that field for how long?

It is the advice of this attorney, who has worked on IP matters as an attorney in Los Angeles for about 13 years, that if you care about a product or service name enough to bring the issue up in a serious way, and have a concern that someone could infringe your trademark such that you might want to sue over it some day, you should register the mark.

It is also the experience of this attorney that if you do not register the mark, you should not expect to get damages beyond actual damages, and you should expect to have to prove more to make your case, and you should expect that some attorneys you will go to for representation will reject representation outright because you failed to register it.

You are free, of course, to choose to do otherwise.

I have been practicing IP law for 10+ years. And unlike you, I am not making a blanket statement about legal advice on registering trademarks. I stick with the general statement applicable to all areas of law that each circumstance needs to be evaluated individually. So in the case of trademark, it would be wise to consult with an IP attorney to perform such an evaluation in order to assess whether registration is an appropriate course of action, not simply presume that registration is the right course of action in most situations as you stated. Then I provided a number of circumstances in which registration may not be the right course of action. And now you appear to be hedging a bit and focusing on loose terms such as "bring the issue up in a serious way", which is fine, but my points still stand.

As for damages, I do not recall any prior distinction being drawn between actual damages and any other sort of damages (e.g., enhanced), but rather the distinction was between damages and injunction. So you will need to read any of my previous comments on the subject in that context. Further, registration doesn't merit enhanced damages any more than lack of registration prevents it; sure, lack of registration means a lot more legal hurdles, but that's the price one has to pay, and is part of the whole discussion about whether to register a mark that should be handled on a case by case basis with an IP attorney.

 

[mudbunny]

Check out the Magic-game related patent mentioned earlier for a example.

The magic patent referred to earlier is not for a game rule but, IIRC, a game mechanic. The act of turning the card by 90 degrees to indicate something. That is not the same as a rule in an RPG.

This site mentions numerous game patents issued every year by the U.S. PTO: http://boardgames.about.com/library/blpatent.htm

The site doesn't seem to work at the moment. I will try it on my home computer. Might be a firewall issue.

This article (http://www.forbes.com/2005/08/15/patent-movies-scripts-cz-df_0812script.html) states: "The Patent Office lists scores of game patents, including one issued in 2002 to a Texas woman for a children's role-playing game that looks a little like the old favorite Clue. "You can get patents on games, and what's the end result of a game?" asks James Hall, a partner and patent expert at Thelen, Reid & Priest in New York. "Laughter, tears, emotions--the same thing as a movie.""

That article still doesn't say what the patents were issued for. Yeah, board games have patents. But is that because they are new mechanics or other patentable piece of art, or are they rules that are being patented.

Shall I go on?

No need to be snarky about it. But yes, I would appreciate a link to an actual patent that is for a rule. A rule of the sort that you would find in a PHB, MM, DMG or other splat book.

Note I am not disputing the fact that board games can get patents. I am disputing the idea that *rules* can get patents.

 

[Mistwell]

I have been practicing IP law for 10+ years.

You've been a practicing attorney in IP law for 10+ years?

I don't mean offense, I just noticed that you rephrased the question in your answer to eliminate the word attorney.

 

[Najo]

Whatever is invented that is new, useful, and not obvious. If something for an RPG meets those criteria, then it will be patentable. I can't say in advance what that "it" will be - that's the point, it will be new and not obvious.

Well, that is my point. Everythign attmpeted in the last 35 years has failed to be patent worthy. No one has come up with it.

Also, even D&D was patented in the beginning, the patent would be up by now. So RPGs as is are not patentable.

Game mechanics are not patentable. You cannot take and describe using dice and adding numbers etc, a certain way and patent that.

You can make your own dice, with special symbols, that work in their own way, and patent those. GW has done it with Warhammer. WOTC I think did it with Dreamblade. etc.

The trick is, getting people to adopt those changes. Has never happened to this day. Ever attempt has failed. Everyway's trading card tarot system, Dragonlace Saga power deck, Changling's Glamour Cards, even Fudge's +/- dice have not revolutionized the way systems are driven in RPGs. Anything software based won't stay current with software and poses many issues with the gather in the living room and play approach. A patent has to be on an invention and how it is used.

 

[slaughterj]

You've been a practicing attorney in IP law for 10+ years?

I don't mean offense, I just noticed that you rephrased the question in your answer to eliminate the word attorney.

I'm not sure what you mean by rephrasing anything, but to be absolutely clear, I am a practicing attorney in IP law, and registered in 2 states and with the patent bar.

 

[slaughterj]

But yes, I would appreciate a link to an actual patent that is for a rule. A rule of the sort that you would find in a PHB, MM, DMG or other splat book.

Note I am not disputing the fact that board games can get patents. I am disputing the idea that *rules* can get patents.

Things seem to be shifting during this discussion. As I recall, the first reference in this thread was something about games not being patentable in Canada (probably due to something about industrial application or some such). And there was a couple of times in which you have cited Canadian patent law. And there is use of the terms "games", "game mechanics," and "game rules", which may or may not be being used interchangeably by various posters. With that in mind, here's a few responses:

1. I reiterate that you are citing to Canadian law, which is not applicable to and is different from U.S. law, so to the extent you continue to rely on it, it is not applicable to ALL that which is patentable. Games, game mechanics, game rules, or other terms may or may not be barred in Canada and even the rest of the world other the U.S. (e.g., with a stated bar, or due to the requirement for industrial application, or whatnot), but that analysis varies under and does not apply to U.S. law and therefore does not mean that such matters are simply not patentable *somewhere* (in this case, the U.S.).

2. It would probably help if you gave a few examples of what you mean by game *rules*, since that appear to be your focus (as opposed to games in general, game mechanics, etc.).

3. Hopefully you will understand, I am not interested in spending hours searching the U.S. patent database, case law, etc. to prove whether or not a game *rule* specifically can be patented, especially when the terms being used herein are shifting and we are presently lacking specific examples to clarify the situation. But given your familiarity with the Canadian IP Office, perhaps if you are so interested in this, you could do such a search yourself at uspto.gov. In an attempt to be helpful though, just brief searches of the terms "game" and "rule" on the USPTO site found patent no. 7316611 ("Method for playing a gambling game") which seems offhand to patent rules to a game (I only took a brief look though) and searching "game rule patent" in Google found patent no. 5497999 ("Method of playing a card game teaching golf rules"). Further searches such as those might reveal that which you seek.

4. As a general matter, unless there is a stated bar to something being patentable, I presumably that anything invented which is new, useful, and non-obvious (i.e., meets the basic criteria of patentability) would be patentable (and even if there is a stated bar, that can even be circumvented under certain circumstances). So I don't know that I have to *prove* that games rules are patentable in the U.S., but rather the onus would be on the doubter to prove otherwise (e.g., finding statutory or case law to the contrary). I hope that seems reasonable.

 

[Mistwell]

I'm not sure what you mean by rephrasing anything, but to be absolutely clear, I am a practicing attorney in IP law, and registered in 2 states and with the patent bar.

You rephrased the question AGAIN, this time eliminating the time frame. But, I'll let it go.

So in your experience, which is apparently drastically different than mine, you have not found it more difficult to obtain things like loser-pays attorney's fees in trademark cases where the mark was based on common-law rights only? And you have not found it substantially more difficult to obtain punitive damages in cases where the mark was based on common-law rights only?

 

[slaughterj]

Well, that is my point. Everythign attmpeted in the last 35 years has failed to be patent worthy. No one has come up with it.

Also, even D&D was patented in the beginning, the patent would be up by now. So RPGs as is are not patentable.

Game mechanics are not patentable. You cannot take and describe using dice and adding numbers etc, a certain way and patent that.

You can make your own dice, with special symbols, that work in their own way, and patent those. GW has done it with Warhammer. WOTC I think did it with Dreamblade. etc.

The trick is, getting people to adopt those changes. Has never happened to this day. Ever attempt has failed. Everyway's trading card tarot system, Dragonlace Saga power deck, Changling's Glamour Cards, even Fudge's +/- dice have not revolutionized the way systems are driven in RPGs. Anything software based won't stay current with software and poses many issues with the gather in the living room and play approach. A patent has to be on an invention and how it is used.

Whether something is patentable and whether someone will adopt and use it are two separate considerations.

Also, to be patentable does not mean "better", it just means "different" than what existed before.

But regardless, games, game mechanics, game rules, or whatever other terms are used may be patentable, including new, useful, and non-obvious inventions in the field of RPGs, short of showing statutory or case law to the contrary. It may be that most RPG game designers haven't bothered to patent their inventions, since (1) patents are expensive and most game companies are not rich, (2) the 800 lb gorilla of the day TSR apparently sent out plenty of threatening letters without needing a patent, so others might not have thought it necessary, (3) since RPGs themselves were invented and not patented, many patents one could get on novel game mechanics probably would have been fairly narrow in scope and not worth pursuing (see #1 again), (4) the new game mechanics may have been considered so incremental in design as to not rise to the level of being thought of as new, useful, and non-obvious inventions by their inventors, (5) many people probably didn't even think about getting patents, and (6) a narrow RPG patent may not recoup the costs associated with pursuing it, making it less appealing for one to be sought/obtained (e.g., there are probably limited opportunities to make more money from a patent than its costs to get because people can just design other game mechanics, avoiding (a) any increased sales because others were excluded due to the patent or (b) paying license fees). In light of the foregoing, especially the cost issues (compared with the value of getting a patent in this area) and the inability to get a broad patent on RPGs in general, it is understandable that there are no patents in this subject area, but that does not mean there couldn't be.

 

[slaughterj]

You rephrased the question AGAIN, this time eliminating the time frame. But, I'll let it go.

So in your experience, which is apparently drastically different than mine, you have not found it more difficult to obtain things like loser-pays attorney's fees in trademark cases where the mark was based on common-law rights only? And you have not found it substantially more difficult to obtain punitive damages in cases where the mark was based on common-law rights only?

I tried to be extremely clear. I am a practicing attorney in IP law, practicing 10+ years, and registered in 2 states and with the patent bar. Did I miss anything else?!

Attorney's fees are a bit of a mess, because most cases settle before then, and there are often more than just trademark claims in a given litigation, meaning that in my experience there are multiple bases for seeking attorney's fees when it does go through trial (e.g., under copyright, state-based claims, etc.). By punitive damages, I take it you mean "enhanced damages"? I find it impossible to get punitive damages at all in trademark cases (E.g., "punitive damages are not available under the Lanham Act." Duncan v. Stuetzle, 76 F.3d 1480, 1490 (9th Cir. 1996).). Even enhanced damages are not supposed to be a penalty (Section 35(a) of the Lanham Act: "In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty."). So:
1. I am not entirely sure what you are getting when talking about punitive damages in the context of trademarks. (Note, I am assuming you are talking about standard sorts of cases, not counterfeiting, etc.)
2. Presuming you mean enhanced damages, I have seen adjustments from time to time, but as noted, they are not supposed to penal in nature. And practically speaking, by the time you end the trial and overcame all the hurdles associated with an unregistered mark in contrast to a registered mark, you have made your case and get paid accordingly regardless of registration status (of course you have to get to that point, which registration makes easier).
3. I think this conversation is way off point at this stage, since the subject of this thread is about getting game-related patents (4e specifically), and is getting into far more detail than is warranted, so I think we should move on.