Patents: Real-World Issues in Mixed Realities

AuthorSteve Chang and Sanford Warren
Pages119-172
119
3
Patents: Real-World
Issues in Mixed
Realities
Steve Chang
Sanford Warren1
Takeaways
Software inventions, including video games and
virtual worlds defined by computer software, are
patentable when properly described and claimed in a
patent application, provided the invention is new and
nonobvious.
Moving forward, unique claim strategy and careful
attention to detail when drafting will be critical to
successfully obtaining and enforcing patents in this field
in light of recent developments in U.S. law regarding
patent-eligible subject matter.
Multiple avenues, with distinct damages and remedies,
are available for patentees to enforce their patent rights.
1. Sanford E. Warren, Jr. is a name partner at Warren Rhoades
LLP located in Irving, Texas. Steve Chang is a principal shareholder
in the Washington, D.C., office of Banner & Witcoff, Ltd. The
authors wish to thank Nathan L. Levenson, an associate with
Warren Rhoades, LLP for his assistance and contributions to this
chapter. For complete author biographies, see the Contributors
section of this book.
PATENTS: REAL-WORLD ISSUES IN MIXED REALITIES
120
Introduction
As more and more real-world issues creep into video games and
virtual worlds, it is inevitable that patents and patent disputes
will arise as well. Those seeking to get or enforce patent rights for
inventions protecting or practiced in a virtual world will inevitably
encounter some unique legal questions that have not yet been
squarely addressed. This will include both issues arising when
obtaining patent rights on “virtual” inventions, such as the types
of eligible inventions and claiming approaches, as well as issues
confronted when actually exploiting or enforcing one’s patent
rights for virtual world inventions. For example, patent holders
enforcing rights on “virtual” inventions may have to pierce the
veil of anonymity offered by many virtual worlds and video games.
Patent holders may also have to address jurisdiction and venue
concerns exacerbated by the international nature and user base
of online games.
I. A Brief Overview of U.S. Patent Protection
A. Utility Patents: U.S. Patentability Requirements
In the United States an inventor must demonstrate that his or her
invention is useful, novel, and nonobvious before the U.S. Patent
and Trademark Office (USPTO) will grant a patent. If a patent is
issued, the term of the patent is 20 years from the filing date of the
earliest U.S. patent application to which priority is claimed.2 A pat-
ent owner then has the right to exclude others from making, using,
selling, and offering to sell the patented invention in the United
States, as well as importing the invention into the United States.3
Since the right is one of exclusion, the patent owner may well be
2. 35 U.S.C. § 154(a)(2) (2006).
3. Id. § 271(a) (2006).
I. A Brief Overview of U.S. Patent Protection 121
prevented from actually practicing its own invention if, for exam-
ple, someone else owns a patent on a subpart of the invention. For
example, a patent on a new video game may include a combination
of a previously patented ray-tracing technique and a previously
patented multi-user communication method. The owner of the pat-
ent on the video game may be unable to practice its own patented
invention without a license from the patent holders on the ray-
tracing technique and the multi-user communication technique.
The principle underlying the U.S. patent system is a quid pro
quo between the inventor and the public where the inventor is
afforded the right to exclude others from making, using, or selling
the invention for a limited period of time in return for teaching the
public how to practice a new, useful, and nonobvious invention.4
The right to exclude provides the incentive to publish the inven-
tion’s details, which in turn adds to the public knowledge, which in
turn is intended to stimulate further innovation.
A useful invention is one that is operable to perform its
intended function. It is also necessary for the invention to have a
“useful purpose.” The determination of what is “useful” in terms
of patenting has been the subject of long-standing debate. In prior
decades, this determination was imbued with moral overtones.
For example, for some time inventions related to gambling were
deemed not “useful” and therefore could not be patented.5 While
the determination of what constitutes a useful invention is impor-
tant to the determination of patentability, it is now well established
that video games and virtual worlds provide utility (e.g., entertain-
ment, education, commerciality) and are therefore patentable.
A useful invention must also fall within one of the four statutory
categories of patent-eligible subject matter: processes, articles of
manufacture, machines, and compositions of matter.6
4. Id. §§ 101–103, 112 (2017).
5. See, e.g., Fuller v. Berger, 120 F. 274 (7th Cir. 1903) (invention for gambling
purposes is not a useful device within the meaning of the patent law).
6. 35 U.S.C. § 101 (2018).

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