Patenting of Games
Growing up in a pre-cable TV world, I played a lot of games such as Monopoly, Clue, Life, Chutes & Ladders, Checkers, Chess and countless others. With all of the cases coming out about statutory subject matter in the last few years, I wondered under what circumstances games could be patented. As it turns out, the U.S. Patent & Trademark Office has issued over 15,000 patents with the word “game” in the title. In addition, the Manual of Patent Classification includes two classes, 273 and 463, entitled “Amusement Devices: Games.” Before the Bilski decision, the Patent Office frequently rejected patent claims that did not recite a “machine or transformation,” which at first blush would seemingly exclude many games from patent eligibility under 35 U.S.C. §101. However, cases such as Bilski and Prometheus do not directly address patent protection for games. Thus, based on the general prohibition against patenting “abstract ideas” laid down in those cases and pre-existing law dealing with games, here are some general guidelines for obtaining patent protection for games.
What Cannot Be Patented—the Rules of Games Alone
Patent Office policy holds that “games defined as a set of rules” are not eligible for patent protection. Manual of Patent Examining Procedure (MPEP) Section 2106(I). Thus, a method claim that defines nothing more than the rules of a game requiring anything tangible will likely be deemed unpatentable. Thus, the rules enough are not alone to obtain patent protection, even if they are sufficiently new (i.e., novel and non-obvious).
What Can Be Patented – Articles of Manufacture
Unlike the mere rules of a game, the physical components used to play the game may provide a basis for obtaining patent protection. For example, the game pieces, the game board, or any other physical components used to play the game may constitute an “article of manufacture,” which under the patent statute is something that can potentially be patented. In addition, many games include an electronic component that would constitute an “article of manufacture.” As long as the claims of the patent
application include one or more of these physical components, the game may be patent eligible, meaning it would not be ruled out as a candidate for patent protection.
However, there is a wrinkle. Being “patent eligible” simply means that the subject matter of the invention is the type of thing that can be patented. Once that hurdle is cleared, the game must still be novel and non-obvious. If the board or game pieces have a unique physical structure, then the game may also pass these requirements for patent protection. However, the situation is different if the only difference between the prior art (i.e., earlier games or patents and patent applications describing them) and your game is the printing on the game board.
Patent Office policy is that printed matter by itself is not patent eligible and that “[w]here the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art.” Manual of Patent Examining Procedure Sections 2106(I) and 2112.01(III). The Patent Office policy is based, at least in part, on the case In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983). In that case, the game included a band or set or rings with several digits imprinted at regularly spaced intervals. The particular digits were defined by an algorithm in the applicant’s patent claims. The band or rings were sufficient to overcome the “patent eligibility” or “statutory subject matter” hurdle. However, the prior art included bands with printed information. The Board of Patent Appeals and Interferences determined that the only difference between the prior art and the claimed rings was the printed matter and that the printed matter had no functional relationship to the band. The Federal Circuit Court of Appeals disagreed, stating that “the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.” Id. at 1386. The Court held that the digits printed on the applicant’s band were related to the band in two ways: (1) the band supports the digits, and (2) the digits formed an endless sequence, with each digit residing in a unique position with respect to every other digit in an endless loop. In contrast, the prior art band included data items that were “independent, bearing no direct relation to the other data entries” on the band and which were “not arranged in any particular sequence.” Id.
There is a difference between printed matter that is functionally related to the substrate and printed matter that is functionally related to the rules of the game. In the Federal Circuit’s non-precedential decision in In re Bryan, 2009 U.S. App. LEXIS 6667 (Fed. Cir. 2009) the applicant sought to patent a game board and game having a touring band theme. The applicant’s claims recited a board having a particular layout, a series of tokens, a supply of money, and a deck of cards called “Consequence” cards. The Patent Office found a piece of prior art that disclosed the same features except for the printed matter on the deck of cards. The applicant argued that the claim was patentable over the prior art because the printed matter allowed the cards to be used in a certain way in playing the game. However, the court rejected that argument, noting that “if we were to accept [applicant’s’]argument, it seems anyone could patent the structure of a pre-existing game simply by changing the game’s theme without changing its structure.” Id. at *8.
There is a dearth of legal decisions dealing with attempts to patent games. In general, games that have some physical components are eligible for patent protection. However, if the content of the game is what distinguishes it from earlier games, then it will be important to functionally link printed matter describing the content to the substrate on which it is printed in a way that distinguishes the prior art. Of course, novel game pieces, other devices, board shapes, and possibly even color arrangements could also impart patentability. Yet, if the only difference between your game and the prior art is the content of what is printed on the game board, and there is nothing special about the game board structure itself, obtaining patent protection may be difficult.
Games can be patented with “kit claims” wherein the combination of components used to play the game is the basis for patentability. Again, however, the printed matter doctrine must be kept in mind because if the prior art would have suggested combining similar components, the mere thematic content of your game may not be sufficient to overcome an obviousness rejection.
One thing that remains to be seen is whether or how the recent statutory subject matter jurisprudence will affect the treatment of games. As we reported earlier, the Prometheus court ignored what was old in the art when evaluating medical diagnostic claims for patent eligibility. Whether that holding further limits the extent to which games may be patented remains to be seen.