Video Game Patents.
They’re complex, expensive, but extremely important in protecting valuable video game inventions. In this post, I’m going to enlist the help of Sean Lynch, patent attorney, to lay out the basics and frequently asked questions about this difficult type of video game intellectual property.
Let’s get started.
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Video game patent basics
What is a patent?
A patent is a right given to inventors by the federal government. The patent gives the inventor the right to keep others from making, using, or selling his or her invention.
To receive the patent, the inventor must apply for patent protection with the United States Patent and Trademark Office (USPTO).
What types of patents are there?
In the US, there are 3 types of patents: utility patents, design patents, and plant patents.
- A utility patent covers how a product functions and is manufactured
- A design patent covers only how the product looks
- A plant patent covers the key characteristics of new and unique plants.
In the video game context, most patents are going to be utility patents (though occasionally a design patent would be used – mostly where trademark or trade dress protection isn’t available).
What are the requirements of a patent?
In order to be granted a patent, an invention must meet certain requirements.
The first requirement is that the invention must fall into one of the four patentable subject matters. This means that the invention must either be a process, a machine, a manufacture, or a composition of matter.
The second requirement for a patent is that the invention must be novel, meaning that this is a brand new invention.
The third requirement is that the invention must be not obvious, meaning that the inventor should not be trying to patent something that is common knowledge or something that someone could come up with easily by simply looking at similar products.
Notable video game patents
In the video game industry there have been many notable, important patents.
The “Pong” Patent
Arguably one of the most iconic patents was U.S Patent No. 3,659,284, “The Television Gaming Apparatus.”
This was the patent which enabled “PONG,” the video game that arguably started it all. The Television Gaming Apparatus patent was granted in 1975 and has long since expired.
Pedestrian danger
Another notable patent is U.S. Patent No. 6,200,138.
This patent, granted in 2001 to Sega, was a patent that covers the creation of a “danger area” around the player in a driving game, allowing virtual pedestrians to move out of the way as the player comes close. You can read the specific claims here.
You can see this method demonstrated in the drawings included in the patent, where they describe the “danger zone” and a flowchart of how the patented invention operates.
Sega’s patent expired in 2018.
Wireless controllers
A recently-expired patent that has been hugely important in 21st century gaming is U.S. Patent no. 6,280,327, “The Wireless Controller.”
Granted in 2001, this patent involved technology that allowed activation signals to be sent continuously to the console for smooth, wireless gameplay.
If you check out the patent application over on Google Patents (and scroll down), you can see the numerous other game-related patents which reference this particular invention.
Sharing game content
One more recent video game patent is U.S Patent No. 10,625,156 granted to Sony in April 2020.
This patent is for a method and system of sharing playable video game content. This allows players to share content that can be both viewed and interacted with by other players.
You can find tons of video game patent examples by clicking into any of these patents I’ve highlighted here and scrolling through to find patents that are being referenced or that Google finds similar.
It’s helpful for getting an idea about the scope of what a typical video game patent can cover. Just take a look at this search for Sony-owned video game patents and the breadth of inventions that they cover regarding gaming.
Introducing Sean Lynch – patent attorney
Patent attorneys are very specialized attorneys – they must have a technical background and have to pass an extremely difficult exam (with a recent pass rate under 50%).
I am not a patent attorney. So in order to get you some useful information from the perspective of a practitioner, I reached out to patent attorney Sean Lynch of Lynch LLP to answer some common video game patent questions. That includes going into a little more depth on some of the basics I touched on above.
Here goes:
What kinds of things do game companies usually patent?
There are really two categories of useful patents for game companies (whether video games, board games, or card games): design patents and utility patents (for the sake of discussion, we’ll lump provisional application in with utility patents for now).
Design patents are useful to protect ornamental or aesthetic features of something. That something can be a user interface in a video game, the ornamental flourishes on a board game, or even the design of a game piece—the biggest limitation imposed by design patents is that you cannot protect functionality.
That’s where game companies lean on utility patents. Utility patents are frequently used to protect game mechanics, and although the Supreme Court’s holding in Alice v. CLS Bank in 2014 created significant hurdles with regard to patent eligibility as it relates to software, the USPTO and subsequent court decisions have relaxed the high bar that Alice initially set (though that high bar was largely the result of confusing among patent examiners about what exactly is an “abstract idea”).
In January 2019, the USPTO released its “Revised Patent Subject Matter Eligibility Guidance,” which has so far gone a long way to relax some of the USPTO’s examination standards when it comes to determining patent eligibility.
In turn, this should hold open the door for more patents related to video games and game mechanics to move successfully through the patent system.
How common is it to file for a patent on a video game? Is that usually just for bigger companies?
While big companies are almost always the ones that develop large patent portfolios, all game companies should put effort into protecting intellectual property rights.
If a game has some new mechanic, that’s worth talking to an attorney about. If the user interface has a unique design, that’s worth talking to an attorney about.
Intellectual property rights can protect a company, but only if the company invests in its rights.
Filing a single patent is a great start, but any long-term strategy should feature continual development of an intellectual property portfolio that includes utility patents, design patents, and trademarks. Company size and resources will be factors your attorney takes into account in developing a smart strategy.
One size does not fit all!
What kinds of things does a developer need to keep in mind if they’re looking to file a patent? Record-keeping? Confidentiality agreements?
One of the first things I ask a client is, “have you disclosed this idea publicly anywhere, and, if so, when?”
In the United States, you have 1 year to file a patent application after making a public disclosure, but in many other countries around the world, the second you publicly disclose your idea (regardless of where in the world you disclose the idea), you lose rights to protect that idea.
Even in the United States, it is always the best practice to file early and file often.
Although you have 1 year to file a patent once you have publicly disclosed your idea, if someone sees your idea and files their own patent on it, it can still create an expensive headache to address the issue.
It’s always a good idea to file before a public disclosure, but if disclosure is necessary before a patent is on file (either a provisional or utility application), then get those confidentiality agreements in place before revealing anything.
What is the usual cost range for getting patent protection on a video game or related technology?
With most patent projects, the largest fees are up front. I’ll go through the three application types below:
Utility patent application
| Action | Estimated Cost |
|---|---|
| Preparation and filing (including filing fees) | $8,000–$12,000 |
| Office Action Responses | $2,000–$3,500 |
| Est. number of office action responses until allowance | 2–6 responses at the above cost |
Once a utility patent is filed, it can sometimes take between 1 and 2 years before the first office action is issued.
Each office action requires a substantive response from your attorney, and the cost to prepare a response varies depending on the complexity of the issues presented. In the software space (where gaming patents typically lie), it is not uncommon to see up to 6 office action responses before getting to a Notice of Allowance.
It is important to keep in mind that no attorney can ever guarantee that you’ll get an issued patent.
The quality of USPTO examiners is extremely variable, and sometimes you get an examiner that just doesn’t budge. In other instances, examiners can uncover prior art that is just too difficult to overcome.
There are many reasons why patent applications might not ever mature into issued patents, but picking a good attorney is the best thing a company can do to improve their odds.
Provisional patent applications
| Action | Estimated Cost |
|---|---|
| Preparation and filing (including filing fees) | $2,000-$5,000 |
| Office Action Responses | N/A |
| Est. number of office action responses until allowance | N/A |
Provisional patent applications are placeholders.
All they do is reserve your place in line at a particular date—the filing date—with the USPTO by disclosing your invention in an application that you can then use as a basis for filing a utility patent application down the road.
Once a provisional patent application is filed, you have 1 year to decide whether to file a utility patent application. Provisional applications can be useful if you’re working on a shoestring budget or if you’re not yet sure the invention will come to market and you’re still working to raise investor money.
Talk to your lawyer about whether a provisional fits into your company’s plan and vision for the future.
Design patents
| Action | Estimated Cost |
|---|---|
| Preparation and filing (including filing fees) | $2,000-$3,000 |
| Office Action Responses | $500-$2,500 |
| Est. number of office action responses until allowance | 0 (these are rare) |
Design patents generally go through the USPTO without receiving office actions.
If an office action is given at all, the issues are generally fairly easy to address. Pretty straightforward.
How did the Alice Supreme Court decision affect patents as related to video games?
Like any other patent in the software space, Alice v. CLS Bank muddied the waters with regard to patent eligibility.
It requires a two pronged assessment to determine patent eligibility. Step 1 is to determine whether the claims in a patent fall within a statutory category (processes, machines, manufactures and compositions of matter).
The answer to step 1 is almost always “yes,” leading the inquiry on to steps 2A and 2B, which can be much trickier to satisfy. These steps have undergone some evolution since the Supreme Court decided Alice, and the version of the steps included below are the most current versions as modified by the January 2019 USPTO Guidance.
Step 2A asks:
whether the claim recites a judicial exception, and
whether a recited judicial exception is integrated into a practical application.
Step 2B asks whether the claim is directed to a judicial exception, and, if it is, it requires evaluation of whether the claim provides an inventive concept. Getting into the details of what each of these steps actually requires in practice would extend this post by about 10 pages, but suffice to say it’s important to hire a good attorney that stays on top of the changing landscape for patents.
As this relates to video games, the two prongs of step 2A are more forgiving than they were as recently as the end of 2018. While these new steps have only just been implemented, foreseeably it will be easier to establish that patents directed to video game mechanics are “integrated into a practical application,” which would establish patent eligibility.
While Alice made software-based patents much more difficult to get for many years, much of the reason for low software patent numbers was related to lack of clarity in the rule. The Supreme Court is responsible for this confusion and lack of clear standards, but the USPTO has made great strides in creating working examination procedures out of the Supreme Court’s holding in Alice.
Any other tips for game developers regarding patents?
FILE EARLY AND FILE OFTEN.
Don’t delay. Don’t wait until you’ve launched to see how it does.
File early. Secure your rights. Do not try to do it yourself.
This, of course, sounds pretentious coming from a patent attorney, but this is a profession like any other—it takes years of training and practice to become proficient at patent prosecution. I have never in my life seen a client-drafted patent result in useful claims (which is generous—most don’t result in any claims at all, instead getting stuck in the office action response phase because the patent is so poorly drafted that it can’t be successfully prosecuted in the first place).
That is not to say it can’t happen, but if you’re betting your company on a patent asset you prepare yourself, why not try out for the Lakers at the same time? You might get lucky and the Lakers will pick you up, and that way you never have to worry about the patent you won’t get.
Zack again.
Thanks to Sean for the insights. You can contact him by clicking over to the Lynch LLP contact page and setting up a free consultation.
