To Patent or Not to Patent

Fairway’s a patent attorney. So when he heard Gamelyn Games’ news that they were seeking patent protection for their meeple with holes for items, his professional interest and curiosity was picqued. He takes you through patent law, but his recommendation to game designer may come as a surprise.

As any good lawyer, let me preface this post with: I am a lawyer, but not your lawyer. And the following advice is about as generalized as possible. If you need a recommendation for a patent attorney, shoot me an email.

A little less than a month ago, Gamelyn Games announced that it was seeking patent protection for its ITEMeeples: meeples with hexagonal holes to hold items like weapons. The ITEMeeples feature prominently in the Tiny Epic Quest campaign. The game community met this announcement with a lot questions and concerns. So, I thought I’d use the opportunity to ply my professional wisdom.

ITEMeeple picture from Tiny Epic Quest campaign page.

Patents ^

There is a long history of patents in board gaming, and Gamelyn Games is following a well-trodden path. But, before we dive into Gamelyn GAmes’ decision, let’s start with some fundamentals. I find getting to the bottom of patents and patent law, it’s helpful to start with some really basic questions:

What is a patent?  A patent is government-granted right to stop others from making, using and selling a claimed invention for a limited period of time.  A patent itself is really just a document that contains a description of an invention.

What is an invention? In patent law, the Supreme Court has explained that an invention can be “anything under the sun that is made by man.”   There are some important bounds on this rule, but, for our purposes, it means anything that you come up with, which is different than something you merely “discover” about nature or math.  Famously, something like “E=MC^2” is not an invention, but if you manage to create a machine that relied upon that formula, that would be invention.

For board games, we can think of “inventions” as the ideas about things that can actually hit the table.

What is a claimed invention? In a patent, the “claimed invention” is a specific recitation of the actual inventive idea. Actual patent documents tend to be long. They include really generic titles and a body of text with expansive language about the invention. In patent lingo, this long text is called the specification. The specification covers everything from the current state of the art to what the invention does. Most of this is just for background, though. A patent owner only gets protection invention that is written in the “claims” section.

The patent claim for the Monopoly Board. U.S. Patent No. 748,626

What are claims?  Claims are a series of numbered sentences toward the end of a patent. For really crazy, historical reasons, each claim is written in a single, gigantic sentence separated by various commas and semi-colons. These really long sentences are what courts and lawyers use to figure out who is infringing and who isn’t. Someone infringes if the thing they’re selling has all the things in the claim.  If you look at the monopoly board claim number 1, it requires that a game board have:

  • corner spaces
  • one of the corner spaces being the starting point
  • spaces between the corners
  • sets of spaces identified by “coloring” or “other marking”

At the time this patent was in force, you could avoid infringing this patent claim by simply not having one of those things. For example, not using a corner as a starting space or not using a board.

How do you get a patent? ^

The snarky answer is: by spending a good deal of time and money. The real answer is by applying for one and spending a good deal of time and money. Patents are government grants.  And before the government actually grants a patent, it puts a patent application through an examination process by a “patent examiner” at the United States Patent and Trademark Office (sometimes called the PTO). The patent application includes things like the description of the invention, “figures” showing the invention, and an initial set of patent claims. Patent attorneys typically draft these and then submit them to the PTO for examination.

Even for simple patents, the examination process can take anywhere from 2-5 years. This process is a giant negotiation between a patent attorney and the patent examiner over the patent claims.  The patent examiner’s job is to make sure the patent claims clearly describe the invention and that the claims describe a new, novel, non-obvious invention. Part of this task means the examiner is searching for prior art and asking the patent attorney to make sure the claimed invention doesn’t actually cover things that are already in the public.

At the end of this ordeal, the inventor ends up with a patent or, in some cases, doesn’t. In either case, it’s not cheap. Preparing, filing and “prosecuting” a patent application will typically cost between five- and twenty-thousand dollars.

How long do you get protection? ^

If you’re lucky enough to get a patent, the time to use patent rights is pretty limited. While the time periods have changed over time, today a patent lasts for twenty years from the earliest filing date.  In other words, a patent application filed today (November 2016) would last until at least November 2036.  The patent office allows for some adjustment for delays caused by it during prosecution, but those adjustments are typically less than a year.

How do you make money off your patent? ^

The Game of Life. U.S. Patent No. 53,561

Patents aren’t magic. They don’t automatically lead to money. Turning a patent into a money-making opportunity has some times been called The Patent Lottery because of how few patents make anyone anything. There are really three primary ways people make money from them:

  1. You sue people.  In short, you take your patent into court along with someone you understand to be infringing a claim, and you ask the court to award you “damages” for their infringement.  These damages can add up very quickly and are often at rates higher than a patent owner might have been able to negotiate for.
  2. You threaten people. Using your patent, you threaten to sue a copycat or second comer for infringement.  In essence, you’re making sure no one else sells anything like your patented thing. This lets you sell your product at a higher price.
  3. You license people.  A very common approach is to simply promise not to sue someone in exchange for money: a percentage of sales or a flat fee when an otherwise infringing product is sold.  In these cases, the patent owner often has a valuable patent but can’t make full use of it. So, rather than trying to do it all himself or herself, the patent owner can license someone who is willing to pay for the right to use the patent.

These options have been employed successfully by lots of companies.

So, should I patent my board game? ^

In the abstract, my answer is probably not. This advice clearly goes against my own economic interest as well as the interest of my fellow patent attorneys.  But, it just doesn’t make much sense for most publishers or designers to spend the money to seek patent protection for a multitude of reasons:

Most fundamentally, it’s expensive. Just seeking patent protection will eat up the cost most publishers have for a game. As I noted above, at a minimum, you’re looking at around $5,000 to get a patent. In reality, it’ll probably be much more than that. This amount includes costs for a patent attorney, a draftsman to draw nice figures, and the plethora of filing and publication and issuance fees.  Even if you get a patent, there are “maintenance fees” that come up periodically over the lifetime of the patent. You can check out all the fees on the PTO’s website.

Second, it’s speculative. Just because you think you have a new idea, doesn’t mean that it is. The patent office can be good at finding prior art that will require you to add more words to your claim. Adding more words makes it harder to enforce and easier for someone to work around. So while prior art does not mean you necessarily walk away with nothing, the scope of your patent might be much less than what you originally considered valuable. Sometimes, the claims that “issue” look nothing like the claims you originally filed.

Even if you get a patent from the PTO with some claims, you’re likely not done. Many patent owners face challenges to the validity of their patents when they go to enforce them against others. Whether a patent survives a challenge is a huge question mark. When you accuse someone of infringement, they have every incentive to find every little piece of prior art.

Scrabble. US Patent No. 2,752,158

Third, it’s time consuming.  From application to patent grant can be longer than the lifetime of many small companies. Before you get anything enforceable, you’re probably looking at somewhere between three and five years. During that time, your ability to stop others from knocking off your idea is very limited.

For some industries, the risk of having to wind-down a product if a patent issues, can be real threat. For example, if you’re buying tooling, committing to reverse engineer a drug or electronic device, you need to invest a lot of money in an assembly process.  For many board and card games, that’s probably not the case.

Finally, it’s expensive to enforce.  A patent is only as valuable as your willingness to go after others. Enforcing a patent means being ready to use your patent rights to sue (or at least threaten to sue) infringers. These costs aren’t just things like monitoring the competition, but also for things like negotiating licensing deals or pursuing an infringer in court.

If you’re thinking about suing someone, it can cost anywhere between two and six million dollars (PowerPoint).

What about Gamelyn Games’ decision? ^

By their own logic, I’m dubious that filing a patent application achieves their stated, primary objective. In a post on Board Game Geek, Michael Coe offered the following explanation:

It’s about making sure that we can see our idea through the 9+ months of pre-market exposure without it being ripped off. …  If we didn’t protect ourselves, then after our Kickstarter and during our 9+ month exposure period, a big company could swoop in and have the same product to the market in 3 months and beat us to the punch off piggy backing our idea.

In the end, the patent may not be approved, and that doesn’t really matter to us as it will have given us the protection we needed during the 9+ months we exposed ourselves to the risk.

But as I noted above, a patent doesn’t really solve for this problem. Assuming he only recently filed the patent application, the earliest I’d expect a patent to issue is some time in 2019. A knock-off company could sweep in, manufacture a game for a cash-grab, and get out of the market before then. There’s very little risk for a would-be knock off artist in that strategy.

At best, this might prevent other companies from investing in long term plan of knocking off game components that work like the claimed invention.

Sorry. US Patent No. 1,903,661

Indeed, Michael does explain that Gamelyn Games invested $10,000 in tooling for these ITEMeeples. Presumably, this cost would have to also be borne by a copycat expecting to sell a game with the ITEMeeples.  Normally, I’d think this alone might be a sufficient deterrent. However, the utility of that tooling isn’t just for Tiny Epic Quest. And, for a copycat maker, they might not be looking at investing in the tooling just for a knock off game.

Instead, the real advantage to Gamelyn is that a patent might prevent a would-be copy cat from recouping the cost over a bunch of unrelated games or recouping the cost by selling the ITEMeeples to others directly. In other words, it’s exactly the reason Michael said isn’t the reason they filed: “Our patent submission is really not about making sure no one else can ever make meeples that carry items…”

For this reason, I think Gamelyn Game’s decision makes some sense. I do think that even for them, the costs might exceed the benefits.  However, as of the writing of this, Tiny Epic Quest is approaching half a million dollars.  It’s probably a reasonable investment.

Are ITEMeeples even patentable? ^

Answering this question is difficult because I have no idea what the patent claims look like.  A patent application won’t be publicly available until eighteen months after it was filed.  If it’s truly novel, the idea of meeples with attachable parts is definitely the sort of thing that qualifies for patent protection.

But there’s a lot baked into that “if.” This is not clearly the first time game components have had attachable bits. There was a Lego Munchkin Kickstarter that included minifigs with attachable weapons: Munchkin Bricks.

That said, by their own statements, the “pending patent is quite limited in scope.”  I could definitely imagine a limited claim that had limitations about the type of game piece (e.g., a meeple), the shape and count of the holes (e.g., two hexagonal holes), and location (e.g., on the arms opposite each other).

Well, if not patents, what do you recommend? ^

Patents aren’t the only way to protect your game.  There are two other areas of intellectual property law that are much more small-publisher friendly: copyright and trademark.  One big advantage is that you don’t have to do anything to get that protection. That’s right: they’re automatic.  While I’m not going to spend a ton of time with these, I’ll briefly touch on them.

Copyright.  Copyright law will protect your specific expression of your idea against copycats: your rules, your art, your text, your templates. The moment you publish it, you have the right to stop others from copying your stuff.  You can register your copyright, which provides you some additional rights, but it’s not necessary.  So, for a vast majority of projects, this is the fundamental and most important type of protection.

Trademark.  Trademark law will protects your right to use a word, phrase, logo, or pretty much anything else you want that is useful for identifying your games. Trademark law is interesting in that it is intended to protect consumers from being confused about the source of a good.  For example, you might be confused if I released a game called Tiny Epic Artists.  Tiny Epic turns out to be a registered trademark of Gamelyn Games.

But like copyright, registration isn’t necessary.  It provides some additional benefits and protections, but the moment that you sell your game to the public, you start getting trademark protection.  What constitutes a trademark and trademark usage, and what protections it gets is likely a subject of another piece.

Interestingly, the name “ITEMeeple” is good example of a trademark.  Gamelyn Games is signaling, by including the “TM” next to its use, that they intend to use it as a trademark to identify their very meeples.

Screenshot from the Tiny Epic Quest Kickstarter campaign.

Conclusion ^

For most situations, game designers and publishers shouldn’t worry about seeking patent protection. Copyright and trademark offer the sorts of protections most people need and have the benefit of being automatic and inexpensive to establish.  However, there are cases where filing a patent application definitely make sense.  Tiny Epic Quests’ ITEMeeples might be one of those.

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