By: Zachary Swartz, 3L Law Student at Emory University
It may sound odd, even to those in the field, but board games are patentable. Even one of my intellectual property teachers didn’t believe me when I first told her. But it is true. One of the best ways to protect a board game is to get a patent, but it is not always the best choice. This post will discuss the relationship between patents and board games as well as the benefits and drawbacks of acquiring patent protection.
A patent is a right granted by the government for an inventor to have exclusive rights attached to an invention. A common misunderstanding about patents is that they give the creator the right to use the patented material, this is incorrect. A patent only gives the right to exclude others from making, using, selling, offering for sale, or importing the patented invention. There is no right to actual use of the invention.
To obtain a patent a creator, or better a patent attorney/agent, must draft up a patent application and submit it to the United States Patent and Trademark Office. Patent eligibility is determined by the three elements of a patent as set out in 35 USCS § 102 and § 103.
- Novelty – The invention must be something new that has not existed before
- Usefulness- The invention must serve an actual use and can’t just be frivolous. According to Donald Chisum in Chisum on Patents, board games can normally meet this requirement because recreation and amusement serve a public benefit.
- Non-Obviousness- The invention cannot be inevitable based on past creations.
Upon satisfaction of the three elements, a board game is eligible to receive patent protection. Assuming the board game is patentable there is still one more important question to ask, “should I get a patent?”
Problem with Patents
The cost and time. Patents are expensive and take a long time to acquire. Time and money are a luxury that most board game creators simply do not have. The degree of these two variables is quite different for the two kinds of patents so each will be addressed separately.
A design patent is one that covers new, original, or ornamental design for an article. Basically, a design patent covers the exact appearance of certain works. The word exact is key here. A design patent only covers the EXACT appearance that is submitted in the application. It does not protect the idea or any functionality of the design itself. Merely the exact appearance. Below is an image of a design patent. The protection is limited to what is included in the below image alone. As we will see this is a stark contrast to utility patents.
Because design patents only consist of a single claim and image the amount of work needed to acquire one is less than for a utility patent. Design patents are cheaper, easier, and faster to acquire than utility patents, but provide far less protection.
The second option is a utility patent. A utility patent can protect the method for how the game itself is played and set up. This can be a major advantage because a patent protects the functionality of the rules themselves. The new rules can include older rules, but the protection of the patent does not extend to the old rules. This restriction is similar to the public domain limitations in copyright law; once something enters the public domain, even if additions were made to it, the holder does not gain any rights over the public domain materials.
The holder can, however, assert copyright protection over the additions made to the public domain materials.
A utility patent for a board game can position a company to have complete control of a new type of game. This was the case with the now infamous Magic the Gathering patent. Magic the Gathering is a trading card game wherein players construct decks of cards to battle their opponents. The company sells the cards that the players use to construct the decks and profits greatly from it.
By having a utility patent cover the procedure of a game, including the order of stages in each player’s turn, the creator is given a great deal of protection in the ability to prevent any competitors from using the patented materials. For games that have unlimited expansion potential, like Magic the Gathering, the ability to prevent competitors from duplicating the games inner workings is vital. The following excerpt from the Magic the Gathering patent gives a good example of the kind of technical writing that is required for successful patent claims.
“entering one or more trading cards into play by placing the one or more trading cards face up in a first orientation on a playing surface, and at the player’s option, using one or more trading cards that have been entered into play in accordance with the rules and tapping each trading card used in play so all players are aware the trading card is in use by turning the trading cards from the first orientation to a second orientation on the playing surface;”
Patent No. 5,662,332 Claim 2 (a)
This claim describes a mechanic commonly known to board and card game players as “tapping.” Essentially it means turning a card sideways when the card has been used. It is this kind of step in a process that a utility patent can protect. It is the protection of these type of small steps in a process that make patent protection for board games so tempting. Neither copyrights or trademarks can come close to that degree of protection.
Deciding on whether to get a patent for a board game is a big financial decision that should not be taken lightly. Many factors play into such a decision, for example, the size of the company and the confidence the creator has in the product. Large companies with expendable income and resources may more easily decide to seek the full protection of the law, while smaller developers may be wiser to use funds elsewhere to promote the game.