The US Court of Appeals for the Federal Circuit (US Court) recently rejected a patent application titled "Casino Game and a Set of Six-Face Cubic Colored Dice," related to "dice games intended to be played in gambling casinos, in which a participant attempted to achieve a particular winning combination of subsets of the dice." The subject-matter of the patent application was a set of three Dice wherein each Die (read singular for Dice) had a marking on only some of the faces. Only a single face of the first die had a first die marking, two faces of the second die had an identical second die marking, and three faces of the third die had an identical third die marking. A wager is to be placed on a particular combination that would appear face up once the Dice are rolled. The patent claims related to the steps of placing a wager, rolling the set of Dice, and paying a payout amount if at least one wagered outcome occurs.

The scope of patentability is analysed against the touchstone of 35 U.S.C. § 101(US Patents Act). Also, excluding laws of nature, natural phenomena and abstract ideas from the scope of patentability, is a long standing precedent in the US. In deciding the patentability, the US Court employed the 2-step test devised in the landmark case of Mayo Collaborations. According to the case of Mayo,, whether the claims are patent eligible is assessed first. Once this doubt is resolved, the Courts examine various elements of the claim to determine the presence of 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application. Here, the Court observed that the claims were directed to the abstract idea of "rules for playing a Dice game". The Court also held that claims directed to dice, card, and board games are not patent eligible because they endeavour to influence human behavior rather than effect technological change.

The only novelty (though insufficient) lay in the fact that the Dice markings were 'printed' on particular faces of the Dice as opposed to markings on all the faces of a normal, conventional Dice. The Court also observed that merely printed information without a functional relationship is not patent eligible subject matter and falls outside the scope of patentability as per Section 101.

The Indian position related to the patentability of such dice/ dice games is covered under Section 3 (m) of the Indian Patents Act, 1971. It states that "a mere scheme or rule or method of performing mental act or method of playing game" cannot be patented.

Compiled by: Adv. Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan

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