Possible Rules Patent?

[Mistwell]

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?!

Fair enough. And I am not doubting you on that.

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.).

Still, you don't think it's worth the less than $500 to register the mark and make sure? And to get the benefit that registration provides with notice? And to get the benefit that registration provides with presumed national as opposed to regional use?

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).).

True. State laws however often award punitives, and fed registration can be used for that (since it provides the all important presumption of notice).

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).

Fair enough. I have not been in litigation for a long time (and when I was, I did not tend to like Federal Court), so I will take your word for it.

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.

I agree. Thanks for entertaining the issue, I found it interesting.

As for patent, like I said earlier I have no idea as it is not a field I practice. I refer that stuff out to folks like you

 

[mudbunny]

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.).

Game rules - Roll 3d6 to create stats. To attack, roll 1d20, add modifiers and compare to the enemy AC. Those are the sorts of things I am talking about for rules.

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.

I will. I just thought you had some on hand. And I think I know why the About.com wasn't working. The USPTO recently, or at least on the portal that I go through for my job, instituted a word matching password to avoid bots doing any searching.

<snip>patent no. 7316611
<snip>
patent no. 5497999

Thanks.

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.

Yup. That's why I provided, in my posts, the part of our Manual of Patent Office Practice, the info on Game Rules.

 

[JohnRTroy]

Well, a specific mechanic could conceivably be patented.

My whole hypothetical was that Wizards could patent a specific game mechanic in 4e that is required to play. I understand it's hard to do, but it's conceivable. Najo says that the market resists things like Fudge's special dice, etc, but if there was a special item like that in 4e, I'm sure people would be more interested in playing D&D than worrying about whether the game has a patent and is thus "less open". In fact, if I was truly concerned with getting more control over my property, I'd probably do that--especially when people start spouting about "reverse engineering" 4e simply because they don't like the fact that 4e won't be released under the older OGL (or whatever it gets called in its final form).

Hasbro has patented games before, so they could be going in there thinking of this. It seems like they want to get more control over the game.

But then again, getting a patentable mechanic is probably hard to do.

 

[helium3]

Anything I can think of involves software and even then its questionable and not ironclad, nor anything that would be adopted by this generation of D&D players nor any gained by 4e in the immediate future. As long as the gather around the table/ living room method of play is preferred, D&D is going to be in books.

Well, I think that's the crux right there.

If they can patent something in 4E it's because no one HAS thought of it.

To say that they won't be able to patent anything because you can't think of something they might patent is sort of an oxymoronic sentence.

 

[slaughterj]

Still, you don't think it's worth the less than $500 to register the mark and make sure? And to get the benefit that registration provides with notice? And to get the benefit that registration provides with presumed national as opposed to regional use?

It'd be that around that cost if they filed it themselves, but I've seen self-filers really screw it up and/or get rejections that were more than they could handle. But with legal help, it's at least $1k more, plus more if there are substantive rejections. For new small businesses, that might be tough to afford. For larger businesses who sell a large range of products (say 100s, maybe 100 appls a year) in many countries (say 50+), that's a huge yearly expense (1500*100*50, plus office action responses, plus maintenance), and focusing on the main marks for registration may be their preferred strategy. And then there are marks which are descriptive (is it worth the registration cost to get on the supplemental register? that's a case by case determination), marks which are objectionable in nature (e.g., FCUK) that can't be registered but can still be enforced as unregistered marks, etc. There are plenty of marks that I think should be registered, but as I said, I think each one needs to be considered individually because each set of circumstances is different.

I agree. Thanks for entertaining the issue, I found it interesting.

Certainly!

 

[slaughterj]

Game rules - Roll 3d6 to create stats. To attack, roll 1d20, add modifiers and compare to the enemy AC. Those are the sorts of things I am talking about for rules.

Perhaps. One more "recent" game innovation has been the Fate Point / Hero Point / Action Point mechanic, i.e., basically in a game, have a limited resource which one can use to adjust the randomly generated die roll (e.g., by re-roll, adding additional dice, etc.), and perhaps at one point in time it could have been patented (at least in the U.S.).

Yup. That's why I provided, in my posts, the part of our Manual of Patent Office Practice, the info on Game Rules.

Sure, and you won't find an equivalent in the U.S. patent law, which is why I said a new, useful, and non-obvious mechanic may be patentable in the U.S.

 

[slaughterj]

Well, I think that's the crux right there.

If they can patent something in 4E it's because no one HAS thought of it.

To say that they won't be able to patent anything because you can't think of something they might patent is sort of an oxymoronic sentence.

That's basically what I was getting it, but got at it better I think

 

[Ranger REG]

Perhaps. One more "recent" game innovation has been the Fate Point / Hero Point / Action Point mechanic, i.e., basically in a game, have a limited resource which one can use to adjust the randomly generated die roll (e.g., by re-roll, adding additional dice, etc.), and perhaps at one point in time it could have been patented (at least in the U.S.).

That method can qualify as candidate for a patent?

 

[helium3]

That's basically what I was getting it, but got at it better I think

Heh. Yeah. I should've read through the rest of the thread before I posted that. *shrug*

 

[Mustrum_Ridcully]

That method can qualify as candidate for a patent?

I guess it's to late by now, if it was possible at all. The system isn't very "recent", I think. Shadowrun had it at least since '89, if I am not mistaken (Karma), and Torg and Warhammer 1E also had rules like these. (I also think that action points are just a different type of hit points...)

I guess you really have to be more creative then that. Anyway, I couldn't give any examples, because
1) There seem to exist no RPG patents we could point to
2) If I had one, I'd patent it myself first.