AIPPI Forum Helsinki 2013 Workshop IV Digital Gaming and IP

Transcription

1 AIPPI Forum Helsinki 2013 Workshop IV Digital Gaming and IP 6 September 2013 Patent Eligibility of Computer-Implemented Inventions (CII): Digital Gaming Inventors Shouldn t Have to Build a Box or Kill Hogs to Get a Patent Richard P. Beem BEEM PATENT LAW FIRM Chicago USA 2013 Beem Patent Law Firm Revised 27 August 2013

2 Program description suggests digital gaming inventions are not protectable with patents (only copyrights and trademarks) On the contrary, most digital gaming inventions probably are protectable with US patents Also, hardware-specific digital gaming inventions probably are protectable in EPO Software-oriented digital gaming inventions should be protectable in EPO Will not address other jurisdictions here Revised 27 August 2013

3 A software-oriented digital gaming computer-implemented invention (CII) should be patent-eligible at least: If it simulates a physical transformation (as in an action game), which, we believe, reflects a technical effect Even if it runs on a general purpose computer with no special hardware (console or controller) Patent-eligible subject matter is separate from novelty, inventive step and industrial applicability Revised 27 August 2013

4 Part 1 of 3 Where We Are Today Revised 27 August 2013

5 Art. 52(2) prohibitions on programs for computers and methods of playing games Art. 52(3) exclusions only to extent application relates to prohibitions of Art. 52(2) as such Revised 27 August 2013

6 IBM/Computer Programs, T 1173/97 held software must have technical effect beyond typical interaction with hardware Hitachi/Auction Method, T 258/03 held software must solve problem with technical solution, technical character and technical implications Revised 27 August 2013

7 Any new and useful process or machine is patent-eligible - 35 USC 101 Chakrabarty (S.Ct. 1980): Anything under the sun that is made by man is eligible for patent USPTO, Congress, Supreme Court: Software is patent eligible unless it is abstract or formulaic State Street Bank (Fed. Cir. 1998): Software is patent eligible if it produces a useful, concrete, and tangible result Revised 27 August 2013

8 Bilski (S.Ct. 2010): Patent eligibility of software is not limited to particular machine or physical transformation or useful, concrete and tangible result but Bilski s software added nothing new or inventive CLS v. Alice (Fed. Cir. 2013): Divided Court affirmed invalidity of certain business method claims but failed to define patenteligible subject matter $1,000,000 Question: To be eligible for US patent, how physical/technical must software be? Revised 27 August 2013

9 New technology has spurred patent law and practice The law has yet to catch up Revised 27 August 2013

10 From 1800: Mechanical patents From 1884 (Edison): Electrical patents From 1946 (ENIAC): Computer patents Revised 27 August 2013

11 1966: US President s Commission: Forget software patents 1971: Microprocessor (Intel) 1972: Odyssey/Pong hardwired digital game and patent 1973: EPC Art US Supreme Court patent eligibility trilogy Revised 27 August 2013

12 Hardware (special computer, console, controller) is patent-eligible. More elusively, program architecture may take full advantage of a computer s capabilities (such as moving from 32-bit to 64-bit addressing) with technical content and having technical effect. Revised 27 August 2013

13 Simulates physical transformation, e.g., virtual killing of hogs Runs on general purpose computer Physical version (slingshot, projectiles, targets): patent-eligible Is a virtual, digital game eligible for a patent? Revised 27 August 2013

14 Revised 27 August 2013

15 Revised 27 August 2013

16 Shouldn t a digital game be patent-eligible when it simulates the real world? Do you actually have to kill the hogs to get a patent? Simple to connect Angry Birds signal output to slaughtering device with undeniable physical transformation and technical effect Do you have to build a box, i.e., a particular computer and/or controller, such as provided in PlayStation, Xbox and Wii? Why penalize inventors for making their programs run on general purpose computers? In other words, shouldn t an action (simulation) digital game for use on a general purpose computer be eligible for patent? Revised 27 August 2013

17 Should Article 52 EPC be amended to delete or amend patenteligibility exceptions for programs for computers and schemes, rules, and methods for playing games? Article 52(3) ( as such ) provides some relief, but much confusion remains European inventors may be discouraged by literal words of Article 52(2) EPO examiners may be confused in citing Article 52 to reject computersoftware-oriented claims as involving merely administrative steps Just as patent systems have evolved to accommodate electrical inventions, so should they adapt to more fully recognize software, i.e., computer-implemented inventions (CII) Short of legislation, it may be possible simply to clarify interpretation of Article 52 (just as US courts are likely to clarify software patent eligibility under 35 USC 101) Revised 27 August 2013

18 Software oriented digital gaming computerimplemented inventions (CII) Probably are patent-eligible in US if they simulate physical transformation Should be in EPO and other jurisdictions (reflects technical effect) Novelty and inventive step must be satisfied Revised 27 August 2013

19 Richard P. Beem BEEM PATENT LAW FIRM Chicago USA Chicago, ca The presenter thanks summer associate Charlie Green for his assistance Revised 27 August 2013