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  America Invents: What The New Patent Law Means For Games
by Kris Graft [Business/Marketing]
16 comments Share on Twitter Share on Facebook RSS
 
 
September 22, 2011 Article Start Page 1 of 3 Next
 

Last week, President Barack Obama signed into law the bipartisan America Invents Act, a measure that its authors claim makes "the first significant reforms to the nation's patent system in nearly 60 years."

But don't expect "patent trolls" who plague the video game industry to go hiding under the bridge just yet, or other burdens on innovation and ingenuity to vanish into thin air.



Patent reform has been a hotly debated topic, particularly for the past several years. The software sector -- including video and computer games -- has seen an enormous amount of patent-related lawsuits, some filed by legitimate inventors who put their patents into practice, and some filed by professional litigators, who own wide-ranging patents and make money by suing anyone perceived to be an infringer.

Search "patent" on this website, and one can get an idea of just how time-consuming and costly patent lawsuits and litigation can be in a fast-moving, innovation-reliant industry like video games. And as video games expand their scope into networked platforms like smartphones and web browsers, we're seeing patent holders from traditionally non-gaming-related sectors creeping in and crying "infringement!"

According to a summary of the Leahy-Smith America Invents Act, which is the result of six years of consideration in Congress, the law is intended to make the patent system more efficient, encourage higher-quality patents, and in turn push entrepreneurship and create new jobs -- something that the U.S. needs badly.

One of the most highly-touted ways the law intends to speed up and simplify the patent process is by moving from a "first-to-invent" to a "first-to-file" system, the latter of which is currently used by the U.S.'s major trading partners.

So instead of Joe Inventor and Jane Ingenious arguing in front of a court over who first conceived the idea for a new holographic social game that charges microtransactions via brainwaves, a court can actually look at the date to determine who filed for the patent first. Whoever filed first, wins (i.e., is granted the patent).

The act finally brings the U.S. up to a world standard and on its surface, streamlines the administrative process, simplifying the process of determining who should be granted a patent. But moving to "first-to-file" (effective in 18 months) is not necessarily good news, according to Stephen Rubin, an intellectual property lawyer with a concentration on the games industry.

"The new law is decidedly a mixed bag for the video game industry," he said. "The promised sweeping reform never happened. The trolls remain alive and well in rural Marshall, Texas. It is not a simple matter to break down the pros and cons of the law. In part, this is due to the fact that the video game industry is made up of both large and small tech companies and what is good for one is not necessarily good for the other. Most prominently, the U.S. adoption of the first-to-file standard benefits large companies over small inventors who tend to shop tech around before filing an application."

Rubin is not the only one to accuse the new law of favoring large corporations. Steve Perlman, a serial entrepreneur who is president and CEO of game streaming service OnLive, inventor of QuickTime and WebTV, and holder of over 100 patents, has been closely following this act, calling loudly for patent reform.

He minced no words when he argued that there is little reform within the America Invents Act, which he said is absolutely not the way to encourage innovation or create jobs inside or outside of the video games industry. The law's first-to-file provision and other aspects favor speedy filing over innovation, and stifles American ingenuity facilitated by the country's more unique "first-to-invent" system, he argued.

 
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Comments

Andrew Hopper
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I wonder how much lobbying money Activision threw onto this pile of dung....

Michael Joseph
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I'm confused...



"Chang explained, "The new law expands the breadth of certain kinds of defenses that an accused infringer has to a claim of patent infringement. The change to prior user rights will help those who have been using a system or process for a long time and suddenly get accused of infringing a new patent."



Switching to first to file almost sounds like it abolishes the concept of "prior art." All that matters is who filed first, but then the above paragraph talks about "prior user rights." Is "prior user rights" the same as "prior art?"

Bevan Bennett
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Prior Art is still fine. If it can be proven that your idea was already published or in public use before the patent was filed, your patent is invalid.



Prior User Rights is a special thing for when a company invents something, works on it for a few months in secret, then someone else patents it or something substantially similar. The company can't invalidate the patent with prior art, because they kept their version secret and unpublished, but they can get 'Prior User Rights', which enables them to keep using their thing without having to pay the new patent owner. They still need to prove they were already using it when the patent was filed.

Victor Soliz Kuncar
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Yeah, the big players in the industry backed it. It probably means that there will be more patent litigation, but software patents will be used more for their original purpose: To maintain giant monopolies while lawyers are the ones making the most money and costumers lose in two ways: Less competition and higher prices, yay. At least there is a slight chance patent trolls will be less of an issue.

Joe Wreschnig
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Reducing patent trolls with any measure designed solely to reduce patent trolls seems unlikely at this point. When NPEs were threatened with, well, being NPEs, they started doing fly-by-night Facebook, mobile, or web software that took probably no more than a few hundred dollars to cobble together via some Asian / Eastern European contract development team but instantly made then "practicing".

Matt Cratty
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The biggest problem is that our nation's judges and patent examiners aren't really able to differentiate between what is a blatant attempt to patent the obvious and something that is actually truly non-obvious.



I'm with Carmack, almost nothing in the software industry should be patentable, especially not gameplay ideas.



But, yes, the first to file rule is specifically tailored to the big companies so that they can prey on the smaller. What you have to go through to get an unassailable patent now is something that only a TRULY exceptional independent or small business could manage.



But, the biggest problem is that we don't have people making judgement decisions that really understand software at all. Most software patents should just be chucked out a window.

Kevin Reilly
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Agreed that the new patent "reform" is not much help to the little guys. I think the only fair solution to deal with patent trolls would be a requirement that they "use it or lose it" as is the case with filing a trademark on an intent to use basis. The article does not discuss the fact that non-practicing entities are taking in Wall St. investment to simply begin litigating patent cases without ever going to trial in order to obtain royalties. Limits on forum shopping would also take a good portion of these cases out of East Texas.

Joe Wreschnig
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See my comments to Victor above - the problem with insisting "use it or lose it" for trivial patents like trolls love is that it's equally trivial for them to find a place to "use it". And when you point out their "use" is an underfunded unknown pile of crap, they'll just claim that's proof they need their patent rights defended before further investment.



Better handling of jurisdiction is a start, but I'm not sure it's really better in the long run - I bet you can find a dozen places in the US with a corrupt enough judiciary (let's be honest - on the whole scale of judicial malfeasance, this is pretty tame) to build something like Marshall, or worse.

Kevin Reilly
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Most NPE's acquire patents from defunct companies and then seek to apply them to anything remotely related. At least "use" for Trademarks is somewhat clearer and there are procedures for review and cancellation to make enforcement consistent. The current patent system simply promotes shake-downs b/c the cost of litigation is so high. At least putting the onus on the NPE to implement the patent would show its purported value.



FYI - patent law is governed by federal law so the judges would all be appointed and serve for life. You can disagree with their philosophies or rulings, but the chances of actual corruption are extremely low b/c they are not elected.

Jeffrey Crenshaw
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I don't understand how life-long terms and non-election _minimizes_ the chance for corruption, all else equal.

Luke Shorts
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Lifetime appointment simply means that no one can make pressure on them promising an appointment extension or a threatening to fire them.

Jeffrey Crenshaw
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But doesn't that also mean that they can more easily do as they please and get paid off by special interests with no fear of repercussions? The four year term in politics was designed with this in mind, why would it be any different in the judicial realm? Surely they have some form of accountability or yearly reviews, and can be terminated if found guilty of abusing their powers?



Also, whether or not it works, the point of elections is to put pressure on those seeking office to please a mass of people instead of a select few that have money or other means of bribery/coercion. I don't think corruption is inevitable in such a system as it comes down to the maturity of the individual in office, but this is the type of system where corruption thrives.

Luke Shorts
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Judges are not above the law, they can be put on trial as well if they commit crimes (such as taking a bribe). However, the lifetime appointment exists exactly because you want a judge to be able to take unpopular decisions or decision against powerful entities without fear of repercussion for the superior interest of applying the law equally for everybody.



If you are unhappy with a law, then you can vote for those you think are minded to change it; that's the way seperation of powers works. I could go on and say why the elections are far from being a good way to get the right people to the right places, but simply the method that sucks less, but I think we got OT enough already :P

Luke Shorts
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I have seen a fair share of analyses of the Act, both from those in favour and opposing the reform. I think there will be few to none repercussions on the software industry and the game industry in particular since the key issue on patenting in this industry is not touched at all (as the article also says):



"the America Invents Act does little to specifically target reform of the highly controversial area of software patents, or even more specifically, gameplay patents, so we'll likely continue to see fiery debate over that type of litigation which is unique to game development"



For the rest, the procedural changes and the post-grant review in particular have good chances of improving (slightly) the quality of the patents issued and reduce (slightly) litigation (the post-grant review in particular has a good track record in Europe, where it is called opposition), so I think these are minor, but good changes. In theory, there is also the possibility for the patent office to see its funding increased, and that could be good if they invest on hiring new examiners to reduce procedural delays, or to improve the examiners' training.



The main point of the reform, the so called first to file (or F2F) transition, has sparked a lot of controversy: there a number of points raised by those against F2F on which I could call bullshit, but I'll avoid that and propose two simple considerations instead:

1) A US patent is valid in the US only. If you want to have the same IP rights in other countries, you have to apply in their patent system, which is F2F (it's not just the "major US economic partners", it's virtually every other country in the world). The rest of the world will still look at the filing date of the application to determine prior art (having a pending US application, or even a granted US patent gives no presumption of validity for applications filed in other jurisdictions), so the distinction between F2F and F2I has any bearing only if your business is strictly local, which does not really apply to most game companies..

2) Even taking at face value the argument that F2I is more friendly to the "small guy", I don't see many in the indie scene considering a good patent portfolio as the key to success. Anecdotal evidence on the other hand suggests that most small guys in the gaming scene consider software/game mechanics patents as the worst thing it happened to the industry...

Jeremy Reaban
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"The act forces small entities to file far more patents far earlier in the development process prior to receiving the funding that would be needed to pay for such patents. And, even when such patents issue, it adds further cost because it makes it easier for larger entities to establish expensive barriers to small entities receiving patents."





Well, duh. Big companies use government regulation and laws to stifle competition from smaller companies.

Ian Martin
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"Large entities, by their nature, simply produce far fewer breakthrough ideas"



Not true. Large entities NEVER produce ideas.

Ideas come from PEOPLE.



This might as well read "from now on, only large corporations can patent things".



You know how many of my inventions I have patented? Zero. Why? Because I can't afford to pay the up front fees. Yay innovation!



The point of a patent is to award the creator, thus encouraging innovation, not to award cash to corporations for patenting "method for saving your game and starting at the same place later".


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