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To Patent or Not to Patent: That is the Designer’s Q:
by Jonathan Sparks on 09/26/13 04:55:00 pm   Featured Blogs

The following blog post, unless otherwise noted, was written by a member of Gamasutra’s community.
The thoughts and opinions expressed are those of the writer and not Gamasutra or its parent company.

 

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Small gaming companies have a major decision to make in the early days of their game development: whether or not to seek a patent for their game.  While an important business question, this can be a moral question as well: if I seek a patent, will I join the ranks of the Trolls?  Patent trolls, also known as “NPEs” (Non-Producing Entities or Non-Practicing Entities), more on this here, are most certainly a plague to our burgeoning video game industry. We certainly don’t want to find ourselves sitting under bridges, watching for youthful game companies to sue. Still, as a real gaming company, we’re going to be doing more than simply waiting for our next “victim.” We’re going to be actually creating and marketing a real product, so maybe a patent is worth considering.

All troll metaphors aside, the value of patents in a software-based industry such as gaming has been frequently questioned.  For example, many believe the general expertise of patent examiners (officials at the Patent and Trademark office, or “PTO,” charged with determining whether an invention is worthy of a patent) is heavily lacking.  This, allegedly, results in patents being issued for ideas that are far too broad and / or patent applications being turned down for ideas that really do deserve a patent.  Indeed, many attribute the gaming industry’s rapid growth to a dearth of restrictions in its early days, and the general scarcity of patent applications.  Having too many patents within the industry can shut out the little guys that create all the innovation necessary for a healthy industry.  To combat patent trolls’ tendencies to stifle innovation in the gaming industry, the Electronic Frontier Foundation, joined by Microsoft and Google, have gone so far as to campaign against patent trolls, pushing the SHIELD Act through Congress. But let’s get down to it – the patent laws are there for a reason.  What do patents really mean to you?

Pros to filing a patent:

Anyone who invents something may be able to get a patent for that idea, including ideas applicable to gaming. Once you do have a patent, it’s enforceable against anyone in the country trying to use the unique aspects of your game.  If someone tries, you get to sue to stop them, or to recover damages including all their profits.  Patents protect ideas, rather than just software codes, as copyrights do.  So, your patent may be able to protect against other games that are not exact duplicates, but use similar concepts or techniques. Also, the patented idea itself can be used in other games in your company’s portfolio. If you have a lot of success with your game(s), you can sell your patent to larger gaming companies, if you so choose, or you can use it to grow your own business by stopping copyists.  Either way, having a patent makes your position at any negotiation much stronger.  For example, if company A finds company B infringing upon their patent with a similar game, A can either begin (or threaten to begin) costly litigation and sue, a process which will take years and millions of dollars, or they can simply find aspects of the competing company’s patent that company A could benefit from, and create a licensing agreement with company B that allows both companies to pay one another for the use of their patents.  In this way, patents help at the negotiation table with competing companies and avoids paying millions of dollars in court costs and lawyer fees.

Cons to filing a patent: 

On the other hand, whether to patent has been a controversial issue in the gaming world for a while now. (see here and here).  Many see the decision to seek a patent as an ethical dilemma in the industry; creating patents may unnecessarily constrain creativity in the gaming industry as a whole.  A recent episode of This American Life was on patents, describing how big companies may even be able to prevent us from playing used games!  There is concern that, even if a patent is granted, that patent itself makes it that much more difficult for startups in the future. Still, if your goal is to protect your business, consider how you would feel if a competitor launched a game incorporating your company’s ideas.

Additionally, a very real concern for a small company is the overall cost of filing a patent, easily as much as $10,000 to $50,000 in the US, and often even more depending on the breadth of the patent sought and the lawyer-hours required to apply for it.  As almost every country has their own separate patent filing system, the price multiplies with each other country a startup wants their patent filed and protected in.  A significant portion of this cost comes up front as the patent application is prepared for filing. The time for a patent to grant is no joke either.  Patent applicants usually have to wait 2 to 4 years before they even hear a reply from the United States PTO, and this response is rarely a conclusion. In a fast-moving industry like gaming, this can be a real disadvantage.

Things to consider NOW

By now, you probably realize that whether to patent isn’t an easy question. But keep in mind that you can’t take forever to decide.  There are some hard and strict deadlines that control when a patent application can be filed; if you miss them by dragging your feet, you’re out of luck.

Suppose you want to show off your new game concept. Is your demo a “private sale” or “public disclosure?”  Gaming companies don’t always consider this, but posting anything on the web to do with the (hopefully patent-able) ideas you want to patent may be considered—in a court of law—a “public disclosure.”  If it is, and it’s better to err heavily on the side of caution on this one, then you have exactly one year to file for a patent—one year from the date the demo or idea was posted on the internet, released to the public in any way, or sold to any person.  Obviously, as mentioned above, patents take years to get, even if you are successful, but thankfully the key date is your application filing date; once you file for a patent, you don’t have to worry about public disclosures or sales affecting your patent.

Here’s the important part: if you don’t file for a patent within exactly one year of the public disclosure or sale, you will forever forfeit your right to file the patent.  And outside the US, you will likely not even have the one year “grace period.”  (Note that selling merchandise, such as T-Shirts with your logo or game characters is very unlikely to constitute a public disclosure or sale of your game for purposes of filing for patents because this activity probably doesn’t disclose the idea that is the “invention.”)

If you’re at all considering obtaining a patent for your game or ideas, it is always best to set up an initial consultation with an attorney who specializes in game or software patents to see if your ideas are “novel” enough to be patented, how much your particular patent application would end up costing, and the timing for filing for your patent.  Do this early, before something happens that cuts off any right to file for a patent.

If you don’t want to seek a patent, like many small game companies, you can take the large risk of relying on the integrity of the gaming community as a whole.  You can also rely on copyrights and trademarks (more on this in future blogs) to provide some protection.  This obviously risks losing your ideas to another company that is able to use them, but is certainly less costly and time consuming up front.

- Jonathan Sparks

 

Disclaimer: This blog is for educational purposes only and does not constitute legal advice. Reading this column does not create any attorney-client relationship. An attorney-client relationship is only created upon signing a client engagement agreement that is provided by an attorney for the particular client.

 


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Comments


Jonathan Pearce
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I have a number of clients who are smaller gaming companies or mobile games companies that have somewhat of an anti-patent bent. What I say to them is, generally, that unilateral disarmament has a pretty poor track record of ensuring mutual peace. Basically, just because you're not filing, doesn't mean others are not. Moral qualms about the system or trying to keep everything "open" are fine, until you get sued by your biggest competitor and have no similar IP with which to defend your company. Suddenly, it costs real money to defend and you're likely to be out a license to your biggest competitor. Obviously, we have ways of dealing with these things as inexpensively as we are able, but the point remains.

On the other hand, it is tough to find pieces of software that truly satisfy the requirements of the PTO as novel and non-obvious. Further, recent Federal Circuit precedent is pointing toward the possibility of some new, strong guidance on the patent eligibility of software-related patents. That is--they may increasingly not be patentable or only be patentable in some circumstances. So, who knows what the rules will be in a year or two? But, yet again, is that a reason to unilaterally disarm now? Probably not, if your company can afford to do their best to protect themselves in the interim.

Jonathan Sparks
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I agree, unilateral disarmament can too often be a trap. Unfortunately, Patent Trolls and large game companies that have an arsenal of patents are able to sit back and wait to see whose products find success, and then sue them for infringement. By contrast, the small companies have to spend the money on their patents up-front. If their game is unsuccessful, they’ve effectively lost the money it took to get their patent.

I also think smaller game companies decide not to seek patents for moral reasons. While this is certainly admirable, the larger gaming companies don’t have to play by these rules. In fact, the very large companies that are publicly traded (on the stock market) have a legal duty to make profits for their shareholders, and this duty could even push them to sue other small companies who may be infringing.

Troy Walker
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those costs don't seem quite right... a trademark and copyright are cheap. patent base fees are cheap.. it's when you start requesting expedition and all that other garbage (extended maintenance, trial, reviews etc...) is when they nickel/dime you.

unless you are accounting for having a lawyer do all the work (which they can't, you still do a lot yourself) I think any 'small' company may be able to protect themselves a bit cheaper.

Jonathan Sparks
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You're right about Copyright and Trademark searches being considerably cheaper than patents, but unfortunately, it's very difficult for anyone to get a patent award for less than 10-50,000+, in the US at least. While there is definitely a great deal of work that has to be done to obtain a patent from the programmer's / designer's side, a patent itself includes a legal portion in addition to the engineering / programming portion. And the legal portion has to be written by a lawyer specializing in patents.

Harry Fields
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I've seen costs of obtaining a patent as high as 400K (not for me personally). There are tons of potential hidden costs. It truly is one of the worst things ever. I loathe patent trolls. I loathe intentional patent infringement. I loathe litigious people who go after small shops for a supposed "infringement" when really, they simply didn't have the funds to do a proper patent search. The whole system is broken... especially for technical industries.

John Trauger
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Patent as soon as is practical. If only in self defense.

Keith Nemitz
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Nolo Press: Patent it Yourself, $50.
I followed that book 10 years ago, and I spent less than 4k. My patent is still alive today. It was a LOT of work, though.

Doug Binks
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"But let’s get down to it – the patent laws are there for a reason."

The history of patent law is an interesting one, and as rife with abuse as benefit. Irrespective of the origins, we should not stop ourselves from examining the current case for and against a law simply because it was once thought to be a good idea.

Today's software engineers are a far cry from the manufacturing inventors of the early seventeenth century. Rather than developing a working mechanism in a mater of months or usually years, today's software engineers count their completed tasks in hours or days. To perform a patent search to accompany every new algorithm introduced into a code-base would stall development - indeed it's simply not done.

So when you come to thinking of spending your time and funds on patents, consider whether you should instead put that into helping fund the EFF or to lobby for action on increasing the barriers to software patents or even abolishing software patents entirely as New Zealand recently did.

Michael Thornberg
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I am so happy I live in EU where software patents are not legal. Software patents of *any* kind are plain rubbish. They only serve to stop new ideas from being created, and putting all the power in large corporations acting like the music industry. Proponents of software patents really turn my stomach. The small developers almost never benefit from this. If software patents were legal in EU, I'd bet real money that Minecraft would never have been made.

Doug Binks
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Funnily enough the marching cubes algorithm was one of the first patent issues I came across in games development. In 1999 I was making what is now often referred to as a Minecraft style FPS (fully modifiable terrain), and had to invent my own algorithm for generating polygons from a voxel field (unlike Minecraft the voxels in the game needed semi-smooth transitions). This didn't take long, but it was frustrating to need to actively work around a patent.

Today, with the patent having expired, interesting novel work is being done with the marching cubes algorithm, for a great example see Eric Lengyel's Transvoxel Algorithm: http://www.terathon.com/voxels/

Lewis Pulsipher
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Quite apart from the costs of the patent (which I have heard quoted, by patent lawyers, as $3,000-$10,000), the cost of enforcing the patent in court is astronomical, more money than a small gaming company is likely to have or ever have.

I understand that the Patent Office became a mess because congress forced them to self-fund. They make money by issuing patents. So they issue patents on things/ideas that should never have been approved.

E Zachary Knight
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So what is the point of owning a defensive patent when 9 times out of 10, the troll suing you has no product on the market which you could target with your patent in a countersuit?

I am of the opinion that patents on software are rubbish. They do not serve the purpose of what patents are for. When putting the words "on the internet" can take an unpatentable process into a patentable one, you know they are not any good.

My recommendation is to open source anything that you feel might be patentable. That is the best defense. To clearly document your process, your product and your methods. Then when a troll comes along, you can use your documentation as evidence of prior art.

Instead of more patents on the market, what we really need are better protections of independent inventors, people who have created something without prior knowledge of an existing patent. We need a better process for invalidating patents. We need to really get rid of software patents as they are.

Andrew Grapsas
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Yes, yes, yes, and yes! Open source your documents. Apply an open license to concepts and features. Don't patent, you're feeding into a broken system that is exploitative and malicious.

Couldn't agree more with you, Zachary. Open sourcing is the way to go (note: you do not need to open source your code, you just need to apply an appropriate license to a concept, model, or algorithm you've created and then publish it publicly with said license).

Andrew Grapsas
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The only appropriate response is this site: http://patents.stackexchange.com/

Help others prevent patent trolls from being issued trivial patents.

The related Joel blog post: http://www.joelonsoftware.com/items/2013/07/22.html


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