The video game business is no game: it’s a business, and a large one at that. In 2004, the video game industry sold over $6.9 billion worth of games for game consoles, portable devices, and personal computers. Throw in the additional amounts spent on the consoles themselves, extra game controllers, and other peripherals, and it becomes easy to see that the stakes are enormous. Not surprisingly, competition is fierce.

Companies spend millions of dollars developing new and innovative games, and everyone is looking for an angle to secure a larger portion of the video game market. In the video game industry the slightest edge can translate into serious dollars.

For example, industry giant Electronic Arts recently secured an exclusive license from the National Football League, making EA the only supplier of authentic NFL football games for the near future. As another example, film director John Woo (Mission Impossible: 2), who made popular the slow motion movie special effect turned video game resource, recently started his own video game development company, Tiger Hill Entertainment, and immediately teamed up with video game publisher Sega.

With all this money being invested in video games, why haven’t more video game developers been turning to patents to help give them a competitive edge?

Our informal review of the records at the U.S. Patent and Trademark Office (PTO) revealed a relative dearth of patent applications for the video game industry, especially considering how technology-dependent the video game industry is, and given its size in terms of annual sales. Why is that?

Patents, by their very nature, grant the right to exclude your competitors from stealing the fruits of your labor, and yet this powerful tool appears to be overlooked by the majority of the industry. In an effort to answer this question, we set out below to dispel what we see as the top six myths surrounding patent protection of video games, and hope to encourage innovative game developers to take steps to protect their valuable innovations.

Myth #1. Video games are just computer programs, and you can’t patent those, right?

Many in the industry feel that games are simply software, and that they cannot be patented. This is untrue. To the contrary, patents may be obtained on “anything under the sun that is made by man,” and computer programs are no exception.

Indeed, the Patent and Trademark Office has expressly stated that “computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter.” This means that you can patent that game disc, or the computer system’s memory that has the game software loaded. You can also patent a method or process performed by a game, as instructed by the object code executing on a computer or game console.

Several savvy game developers have recognized this, and patents have recently been issuing on a number of familiar video game concepts and peripherals. Let’s see if you can name that game by identifying the video or computer game to which each of the following patents refers (answers appear at the end of this article)

1) United States Patent No. 6,604,008, entitled “Scoring based on goals achieved and subjective elements,” and assigned to Microsoft Corp., describes a method of determining points to be awarded to a player, where the points are based in part on style. (Hint: Speed through the town of a certain caped crusader)

2)United States Patent No. 6,695,694, entitled “Game machine, game device, control method, information storage medium, game distribution device and game distribution method,” and assigned to Konami Corporation, describes a game method that detects whether a player has placed his/her foot on a plurality of step positions, and calculates an amount of energy consumed by the player. (Hint: Groovy!)

3)United States Patent No. 6,200,138, entitled “Game display method, moving direction indicating method, game apparatus and drive simulating apparatus,” and assigned to Sega Enterprises, Ltd., describes a game method in which movable objects automatically move away from an approaching character. (Hint: Fare approaching!)

4)United States Patent No. 6,729,954, entitled “Battle method with attack power based on character group density,” and assigned to Koei Co., Ltd., describes a method of calculating attack or defense strength of a character based on its proximity to other characters in a three-dimensional battlefield. (Hint: Shang, Zhou, Qin, Han, anyone?)

You can even get patent protection on purely ornamental designs associated with games. Those patents, known as “design patents,” protect ornamental aspects of items, such as the distinct appearance of a game console (U.S. Design Patent No. D452,282) or an onscreen icon (U.S. Design Patent No. D487,574).

The bottom line here is if you can make it, you can patent it. Video games are a multi-billion dollar industry, with millions being spent on development, and the fruits of that labor can certainly be protected by a U.S. patent.

Myth #2. Ok, even if you can patent computer programs, my video game is based on old stuff, and is nothing new.

All inventions nowadays build on the work of others, and this myth is just a classic example of selling yourself short. Inventions come in all shapes and sizes, and if your game does nothing more than add one novel concept to a mountain of old game concepts, that novel concept may be patentable.

So, for example, if your video game is an automobile racing game, you might use familiar concepts such as turbo boosting your car, damaging your car when collisions occur, and displaying a racer’s progress on a map of the race track.

However, maybe your particular racing game has a novel way of granting or implementing the boost; maybe your game has a unique way of handling or showing damage; or maybe your game uses a novel approach to displaying the race track progress. Whatever novel aspect you’ve added, if that aspect is something that will help set your game apart from others, and help sell your game in the marketplace, then that novel aspect may be protectable by a patent.

Indeed, if your game is different from other games in any way, then you have possibilities for a patent covering those differences as inventions. The invention need not even be something immediately apparent to the player. Perhaps your software algorithm takes an approach that maximizes the available memory of a game console, or renders certain images faster. Maybe your game uses a novel method of loading and discarding content to avoid load times during gameplay, or has a novel control scheme. If it will help you sell the game, it is probably worth protecting by patent.

Myth#3. The patent process is slow, and the industry is fast – by the time the patent issues, it will be worthless.

True, a typical patent application can take three years or more to endure the examination process and emerge from the U.S. Patent & Trademark Office as an issued U.S. patent. However, recent developments have quickened the rate at which you can have patent rights. In 1999, Congress amended the patent laws to provide so-called provisional rights that can afford you protection beginning just 18 months after you file your application (sometimes even sooner).

Of course, there are steps one needs to take to preserve those rights, and your patent application still has to eventually issue as a patent, but these provisional rights can give your patent application “teeth” far sooner than the patents of old. If you time it right, and get your patent application process moving early enough in the video game development cycle, you might begin to have provisional rights at the same time as your game’s release.

The length of the examination process is a well-known concern, and the PTO has taken steps to speed up its examination process by setting a timeline for acting on applications. If the PTO fails to meet the deadlines in its timeline, your resulting patent may actually be given extra time to add on to its enforceable term to make up for the delay. Who knows, if your game concept catches on, those extra days/months of term at the “back end” of the patent term may be extremely valuable.

Additionally, this may be another example of selling yourself short. Many inventions are broader in scope than the particular embodiment first produced by the inventor, and a good patent attorney can help an inventor identify the true, full scope of the idea that has been invented. So if the industry happens to slightly modify your original idea, a patent covering the broader concept may still encompass those modifications. Furthermore, many innovative game ideas last far longer than the few years that a patent takes to issue – concepts such as the mouselook control scheme, “rag doll” physics, and real-time resource gathering simulations will likely be around for many, many more years, and that next great concept might just be lurking in your next game.

Myth #4. I’d never sue someone for patent infringement anyway – the courts are too slow and lawyers are too expensive.

You don’t have to sue someone to benefit from your patent. Being able to say “this game is protected by a U.S. patent” can do wonders for marketing, attracting investors and financing, and can give your company negotiating credibility, leverage and strength in the marketplace. You may choose to simply license your patent to others, collecting licensing fees in the process (and making the patent pay for itself). A patent portfolio is also a good defensive tool. Competitors, who will no doubt take advantage of the patent process for themselves, will think twice about suing you if there’s a threat of you suing them back (i.e., a countersuit). Remember, the best defense is often a good offense.

Of course, sometimes you do have to sue to enforce your patent rights. However, that suit does not always have to be lengthy, and does not always have to be costly. Some forums (e.g., the District Court for the Eastern District of Virginia and the International Trade Commission, to name two) are well-versed in patent litigation mechanics, and cases can move very quickly in those forums. Additionally, legal fees can be included in the damages sought in a patent infringement suit, and some attorneys may agree to take your infringement case on a contingency basis (meaning they get paid only if you win the suit).

Myth #5. The “spirit of innovation” works best when there is a free market of ideas, and consumers are better off if video games are not patented.

A classic argument among those who feel that the entire patent system should be abolished. You might want to make that argument to your representative in Congress, because unless the Constitution is amended to do away with patents, they’re here to stay. In drafting the Constitution, our founding fathers recognized that the best way to promote progress in the “useful arts” was to reward inventors who come forward and share their inventions with the public by granting them a limited period of exclusivity in which they can exploit the fruits of their labor. In other words, discouraging slavish copying encourages innovation.

This debate is largely academic-the patent system is here now, and it’s here to stay. Most important to the game developer, however, is the fact that there are others in the industry who will inevitably seek more and more patent protection on their own game ideas. The annals of patent history are full of examples of individuals who lost out, in some cases losing out big, to others in the business who took advantage of patent protection. Indeed, the history of video games bears this out.

Ralph Baer is largely credited as the father of video games, having conceived of creating video games in 1966, and making millions for the game Pong.

Baer was meticulous in his recordkeeping, and took advantage of the patent system to help develop his fledgling business. However, four years earlier, another individual named Steve Russell finished work on his own computer game: Spacewar. Unfortunately for him, Russell did not seek patent protection on his concept, and did not document his development efforts as well as Baer. We will never know how history may have been rewritten had Russell sought patent protection on Spacewar. The moral of the story is simple: you should act to protect your inventions.

Myth #6. It costs a lot of money to even get a patent in the first place, and I can’t afford that.

True, patents don’t come cheap. But when you compare the costs of obtaining a patent to the amount of money often spent on development of modern computer games, it’s a reasonable expense for the protection it can provide.

There are also approaches you can take that are less expensive, and still don’t require you to entirely give up on the patent system. For example, game developers can implement simple internal procedures, and educate their engineers, on how to recognize potentially patentable innovations in their games. Relatively inexpensive patentability searches can be performed, where a search is conducted to see if your particular concept is already out there in the public domain, or in someone else’s patent. These approaches are less expensive than pursuing a full-blown patent on all of your potentially patentable ideas, and they at least give your company a chance at identifying and pursuing key innovations.

So in conclusion, video game innovations will play a large role in determining who shares in the ever-growing multi-billion-dollar video game industry. As more and more companies enter the market, and spend more and more resources developing those innovations, protecting those innovations will become even more critical. We hope this article has been helpful in dispelling some of the myths surrounding patents and video games, and we encourage all software game developers to take their intellectual property rights to heart.

For more helpful articles and research information on various aspects of patent law, feel free to look us up at www.bannerwitcoff.com.

Last, but not least, we have the answers to our “name the game” questions:

1.This patent relates to games that reward players with style points for achieving feats with panache, such as Microsoft’s Project Gotham Racing II for the Xbox.

2.This patent relates to games that include a workout mode for a dance pad, such as Konami’s Dance Dance Revolution.

3.This patent relates to computer characters who scramble out of the way of your taxi in Sega Enterprises’ game, Crazi Taxi.

4.This patent relates to battlefield strength and morale, as used in Koei’s Dynasty Warriors series of games.

Ross and Steve are Shareholders with the law firm Banner & Witcoff, Ltd. in Washington, DC. The views expressed in this article are those of the authors, and should not be attributed to either Banner & Witcoff, Ltd. or to any of its clients. This article is for information purposes only, and does not establish an attorney-client relationship with anyone. For more information, visit htt://www.BannerWitcoff.com. Always consult competent legal counsel for assistance, as rights may vary depending on the facts of each scenario. Ross and Steve may be contacted via email at rdannenberg@bannerwitcoff.com, schang@bannerwitcoff.com, or by telephone at (202) 824-3100.