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Patenting Board Games 101

Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
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Posted: Dec 22, 2011 @ 12:22 pm
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As we rapidly move forward toward Christmas the holiday season is more and more on my mind.  As I started contemplating what to write my mind wandered to a topic I have wanted to write about for a while, and which seems particularly appropriate at this time of year.  Board games.  I have so many good memories of receiving various board games as gifts over the years, particularly at Christmas.  Santa Claus always knew that I enjoyed playing board games, so every year there was at least one under the tree.

It might come as a surprise to some that board games are patentable, but they are indeed.  Processes have always been patentable and at its core a board game is just a method of playing by a predetermined set of rules.  The goal is to crown a winner and sequential and repeatable steps are engaged by two or more players.  Board games are definitely patentable, provided of course they are unique.  I won’t spend time discussing whether a board game is unique, but rather will assume that to be the case.  It is, however, always wise to first do some kind of a patent search to verify that you are not wasting your time and money following a path that will not likely lead to a patent being granted.  For more information on patent searches see Patent Search FAQs, Patent Searching 101 and Patent Searching 102.

Of course, no single article can teach you how to write a patent application, but if you understand some of the basics of what will need to go into the patent application you are ahead of the game, and I think you may wind up with a better, more complete game in the process.

Title

It is simple enough I know, but I am a fan of starting with something easy.  What is your invention in one sentence or less?  Not surprisingly that will be the title. While coming up with a title seems like a trivial step frequently I find that the way you characterize the invention in that pithy first sentence can focus the direction of the entire patent application, setting the tone and theme for how you want to present your invention.

If you do a Google Patent search for “board game” you will find page after page after page of patents simply titled “Board game.”  Not very creative to be sure.

The title should be a brief but technically accurate, descriptive and should contain fewer than 500 characters, although a 500 character title is rather rare and really unnecessary.  Typically you want to come up with a short title and I typically suggest is that you consider a title that is descriptive and 8 words or less.  Here are some examples of titles that convey at least a little more information that “board game.”

Alternatives

In my experience one of the things that inventors of board games frequently forget is the inclusion of alternative methods of play.  Don’t just focus on the preferred method of play and preferred rules, but think about ways that the game can be modified and changed.  Let me use an example from the extremely popular game Monopoly.

One of the things that keep many people from playing Monopoly is the length of the game.  That has lead to any number of various “house rules” to be implemented by those who love the game but want it to be played faster so the game can be completed in a reasonable time frame, or at least before everyone loses interest.  So if you invented Monopoly in addition to the traditional rules you should give some thought to rules associated with accelerated play.  For example consider text like this:

Alternatively, in order speed up play one or more of the following rules can be agreed upon by a majority vote (or unanimous vote) of all players prior to the commencement of the game: (1) the title cards to each of the properties can be divided amongst the players at the beginning of the game; (2) only need 3 houses are required to be on a property in order to purchase a hotel rather than the 4 described in the regular game rules; (3) a predetermined time limit can be placed on the game (i.e., such as 90 minutes) with the winner being declared at the end of the given time period based on the player with the most cash.

Obviously, there is no particular magic to the above paragraph, and if you you wanted to write down all the various methods to accelerate play you would need multiple pages of text.  But that is exactly what you want in your patent application.  You want to cover whatever you can no matter how imperfect.  If it works on any level it should be included because if it is not then you don’t own those rights, it is that simple.

If want  your patent to be as broad as possible you will want to include any number of alternatives.  That is true for any invention, but no where is it more true than with respect to board games.

What kind of rules do you use when you play at home? Give it some thought.  In the meantime check out The Key to Drafting an Excellent Patent – Alternatives.

Prior Art

While you probably do not want to talk very much about “prior art” in your patent application it is always helpful to appreciate what is in the prior art.  If you do not know what is in the prior art how can you ever hope to describe your invention in a way that accentuates what is most likely unique?  Without knowing what is in the prior art for all you know you might just be describing exactly what is in the prior art without anything unique being added.  You just don’t know.

What kind of understanding of the prior art do you need?  Obviously, you need an honest view of the prior art, but beyond that you need to be able to tell the story of the prior art in writing so that you can set up the uniqueness of your invention.  For example:

In a conventional trivia game, an objective question is posed to a player, and if the player answers the question correctly, he or she is entitled to advance toward a winning position. If the player cannot answer the question correctly, no advancement occurs. Typically, such games are won by the player whose movement piece has traversed a predefined movement track. The questions of such games usually have specific answers, and generally comprise subject matter—often obscure—that can be divided into categories such as sports, arts, geography, politics, history, science and so forth. Such games generally require players to recall specific pieces of information for strategic advantage, and thus do not require players to think critically, answer subjective questions, collaborate, or make strategic decisions.

Now you may NEVER write something like that in a patent application, or if you do you might have it be extremely abbreviated.  Why goes beyond the scope of this article, just trust me for now.  Nevertheless, you absolutely need to be able to explain what is out there in this type of fashion.  By describing the prior art for yourself you start your creative wheels in motion.  If this is how someone would fairly characterize the prior art how do I convince them that my invention is unique?

Truthfully, if you cannot fairly describe the prior art and then articulate distinguishing features you really don’t have an invention.  However, if you do fairly describe the prior art and then critically look at your invention you may well be able to identify things that are lacking in the prior art and then modify your invention to exploit those missing pieces.

Uniqueness

Now you understand what is in the prior art and have started to figure out how to explain the differences between your invention and the prior art.  The next step is to put this into some kind of workable framework that is likely to lead you to an articulation of the invention that has a chance to be deemed unique enough to obtain a patent.

If you are going to obtain a patent you are going to have to describe an invention, in this case a game, that is unique.  It cannot be identical to anything in the prior art (a novelty consideration under §102) and it cannot be obvious in light of a combination of prior art games (a consideration under §103).  You absolutely need to be able to articulate how and why your game is unique.  If you cannot do that then you really don’t have an invention, although the game might be quite entertaining.

At the risk of oversimplifying this very important step allow me to encourage you to work on something of an “elevator speech” that will explain WHY your game is unique.  An elevator speech needs to be able to be delivered in about 15 to 20 seconds.  Imagine you were in the elevator with the CEO of Toys R Us.  You have from the 1st floor until whatever floor they are going to get off to pitch your board game and generate enough interest to get to the next phase.  This needs to be rehearsed, delivered precisely and leave the CEO wanting more.  For example:

My board game is unique when compared with other known educational games because it requires players to go beyond mere recollection of specific, and often obscure, facts, and requires the participants to think critically, answer subjective questions, collaborate and make strategic decisions.  By playing the game children develop skills that help them bridge the gap between regurgitation of facts to synthesis and presentation of information.

If this were really an elevator speech you would want to weave in a bit more, but for our purposes it is sufficient for now.  What you have here is an articulation of WHY the game is unique, not HOW the game is unique.  In my experience inventors are good at either explaining why their invention is unique or explaining how their invention is unique, but rarely both.  My theory is that is because most people don’t distinguish between why and how, but in the inventing world this is crucial.

You can point to steps of play that make your invention different from a HOW perspective, but why is that difference really unique?  What underlies the difference, if anything?  Similarly, the game may be educational in nature and work toward building a skill set for players, whether children or adults.  The fact that there isn’t anything known that delivers the same WHY factor is helpful, but not enough to get a patent.  Patents need to focus on mechanics and process.

Before progressing let me give you an example of a HOW statement:

The game is unique because the playing surface is made up of three similar boards or grids lying in three vertically spaced planes. Each of the three boards is divided into thirteen similar spaces or squares. Nine of the spaces form a square, three spaces on each side of the square surrounding a central space. The remaining four spaces lie outside the square with one space lying next to the center space of each of the four sides of the square.

Did you follow along?  Probably not, but hopefully get the idea.  Here the HOW is associated with the game board and if you were describing this you should have an illustration and refer to that illustration to assist the reader in following along.  Pictures are worth 1000 words — if not more — so for goodness sakes never skimp on professional drawings. In any event, the unique playing surface almost certainly influences the objectives of the game and the playing steps, so you can use a structural uniqueness to build upon to further explain process step uniqueness.

In my opinion the several paragraphs you will write that address the why and how are critical.  They set the theme for the invention and can help provide that critical “A Ha” moment.  In my experience if there is really an invention there is it usually clear, but along the journey to describe the invention so that others will appreciate the magnitude of the uniqueness you need to capture them and give them a reason to understand that same “A Ha” that you have.  Thus, spending time figuring out the how from a process level and the why that underlines the process level will be very beneficial.

Before leaving this topic let me return to the WHY statement about the education board game above.  Here is one way that you might be able to envision the WHY and the HOW coming together:

The present invention is an educational board game. The invention goes beyond mere recollection of specific, and often obscure, facts, and that requires the participants to think critically, answer subjective questions, collaborate and make strategic decisions. In particular, the game challenges players’ knowledge and understanding of important information about United States government, history and culture. The game comes with instructions, a game board, and multiple player pieces, question cards containing easy, intermediate and difficult questions, and an answer key. Each question card will have both an objective question with point total and a subjective question. Players advance their player movement pieces along the player movement track the number of spaces corresponding the number of points achieved, with the subjective questions being evaluated and scored by other players. The object of such a game is to be the first player to traverse the player movement track.

As you can imagine, there is so much more that can be told about inventing and then patenting a board game.  This only scratches the surface, but hopefully it will give you some actionable ideas about how to move forward.

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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patent Basics, Patents


About the Author

is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

 


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16 comments
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  1. Gene,

    My brother Mark (the true “boardgame geek” in our family) and I have discussed the difficulties in patenting boardgames. If the boardgame has some fairly unique components which interact with each other and the board (like the 1980 classic “Dark Tower” of which we still have an operating “tower” which is rare), you might have a chance for realistic patenting of the game. But most boardgames (especially of the wargame variety) depend heavily for uniqueness on the specific rules, the particular layout of the board, and the counters that are used to represent units, markers, etc., which is much more amenable to copyright protection. Wargames in particular usually rely upon a handul of fairly well-developed (and therefore “old”) game systems. One of the most sucessful EuroGames, Settlers of Catan, which has sold over 9 million copies (I believe that’s second behind Monopoly) doesn’t have any patent protection that I’m aware of, although I’m sure the components(some of which make up the board) and the specific rules are subject to copyright. Coming up with a boardgame which you can realistically patent isn’t easy, as my brother Mark will also tell you (as he has also told some frustrated game developers and distributors). In fact, many boardgame designers do it as a hobby, not as income-earning job.

  2. Gene:

    This is very informative. As a Patent Illustrator I have throughout the years done drawings of many board games as well as online games. From simple to complex. This is a really good blog because many families out there may have some nice ideas for a board game that they discovered with their families, but may not think it is patentable.

    Autrige Dennis
    http://www.ascaddex.com

  3. EG-

    I wouldn’t want to suggest that getting a patent on a board game is easy. A lot of what I have seen from inventors over the years doesn’t strike me as particularly new and instead draws on a couple games to create a quasi-original game at best. Perhaps there is more of that in the game area than in other areas because virtually anyone can “create” a game. But it certainly doesn’t cut it to just take elements from game 1 and elements from game 2 to create a “new” game. That probably never would have been sufficient and in a post KSR world is just not going to get you across the finish line.

    I agree that focus has to be on the particular rules of play and frequently also in combination with the board design itself. You also raise a good issue with respect to copyrighting what you can, if anything. Overlapping IP is definitely the way to go.

    -Gene

  4. Thanks for the comment Autrige. Do you have patent numbers or application numbers for the games you have worked on? Feel free to post them here or send them over to me.

    FYI everyone… Autrige is an illustrator I have used with some frequency and I think his drawings are top tier.

    Cheers.

    -Gene

  5. Gene,

    Before I forget, for those who would like to know more about boardgames, the best place to go is BoardGameGeek at: http://www.boardgamegeek.com/ . BGG has postings on EVERY boardgame imaginable, including really “old” classic like Monopoly and even the Chinese game “Go.” The other gaming blog I use is Consimworld which is more for wargaming, but does have some forums for other boardgames.

  6. Great subject.

    Speaking of Monopoly and overlapping IP, take a look at US 7597326 http://www.google.com/patents?id=pv_IAAAAEBAJ When I first looked at the playing board I thought, “Oh, that’s a Monopoly board”

    Does this game have copyright / trademark issues to be concerned about?

  7. Mark-

    I don’t know that there would be any copyright issues, although I would be willing to be convinced otherwise by argument. Copyrights are not supposed to cover functionality, and I would think an argument could be made that the board game appearance is functional. I think copyright protection would have to exist for games in the playing pieces and artwork that is put onto the board and cards, etc.

    From a trademark standpoint I think an argument could be made. I’m thinking trade dress here, which protects the “look and feel” of something. Trade dress protection in that sense is actually quite similar to design patent protection in that it asks whether the ordinary customer would be confused and think that the second is associated with the first. Like you, it is hard for me to look at this game and not think Monopoly.

    -Gene

  8. Gene,
    Thanks for the feedback.

    This technology class (273/376), by the way, is tougher than it looks. I examined a random sample of 20 applications and only 3 have issued as patents. The rest were abandoned. As indicated above, anyone thinking of filing in this area would do well to have a thorough prior art search done before filing.

    Another issue is that examiners seem to be unmoved by the attorneys’ responses to their rejections. Only about 1 out of 7 responses is resulting in a notice of allowance. The rest are getting another rejection.
    It might not be a bad idea to ask your patent agent/attorney to take a look at a few file wrappers of both issued and abandoned applications before responding to a rejection. That will help illustrate which arguments are working and which ones are not. The standard arguments apparently are not.

  9. Mark,

    I checked out the patent you mention. The similiarities between Monopoly and this game are very superficial. Basically, both are games with a track board with spaces. But Monopoly has specific indicia on each of its spaces whereas this game appears not have such indicia. Also, Monopoly uses dice, whereas this game uses a spinner. In my opinion, even a copyright/trademark claim likely wouldn’t get by summary judgment. That’s my 2 cents.

  10. Somewhat ironic that you chose to write about games just a few days before Christmas! It sorta mirrors a topic that Larry McDonald broached on the InventNet forum about a month or two ago, which was specifically about the game Monopoly. It had to do with getting a bit Creative, shall we say, when things happened to be somewhat less than optimal, for the lack of a better description. I hope you and Larry don’t mind my posting his original post and my reply to it in toto, as I happened to find the subject to be very fascinating, to say the least of it. It hints at better days ahead, if you can only use your imagination just a little bit. Viz: Long post alert~

    Hi Larry-

    My father told me about the silk maps, which he said were truly works of
    art, but I hadn’t heard about the Monopoly gambit before. He flew P-47
    Thunderbolt fighters during the war, and after the maps were produced,
    nearly all Allied airmen were required to carry them on their person in case
    they got shot down in enemy territory. He told another very interesting
    story about a fellow who was going around teaching allied airmen how to
    escape if they were shot down, which I found to be brilliant and Very
    creative.

    What he did after he parachuted out of his aircraft was to find a
    sympathetic farmer in France, that loaned/sold him some civilian clothes,
    and a wheelbarrow and a shovel. (American chocolate bars) He then put his
    uniform and his emergency kit and Colt 45 into the bottom of the
    wheelbarrow, (he kept the uniform to prove that he wasn’t a spy, which had
    very severe penalties at the time) and then used the shovel to cover it all
    liberally with manure. He then proceeded to wheel that barrow a few hundred
    miles to the coast, reloading it with supplies now and then, where he was
    able to arrange for a boat ride back to England and Freedom.

    It reminds me of one of my favorite movies of all time; the true story of
    The Great Escape, from 1963, starring Steve McQueen, David McCallum, Donald
    Pleasance and James Garner, to name just a few of the stellar cast members.
    During their time as POW’s, they invented wooden trolleys to help build
    three escape tunnels, used Red Cross milk tins and old rain gear to
    manufacture air pumps and ducting to provide air to the diggers in the
    tunnels, and used other Red Cross supplies like gelatin to create mini
    printing presses to produce forged documents, coffee and other things for
    ink for the documents and to dye fabric to produce fake German or other
    uniforms, and even created their own compasses to aid them after they had
    escaped.

    Stan E. Delo

    Subject: [I-NET] Games can save lives

    Sometimes little inventions can make a big difference:

    Monopoly’s role in World War II – Who knew? (You’ll never look at the game
    in the same way again!)

    Starting in 1941, an increasing number of British Airmen found themselves as
    the involuntary guests of the Third Reich(as POWs), and the Crown was
    casting about for ways and means to facilitate their escape…

    Now, obviously, one of the most helpful aids to that end is a useful and
    accurate map, one showing not only where stuff was, but also showing the
    locations of ‘safe houses’ where a POW on-the-lam could go for food and
    shelter.

    Paper maps had some real drawbacks — they make a lot of noise when you open
    and fold them, they wear out rapidly and, if they get wet, they turn into
    mush.

    Someone in MI-5(similar to America ‘s OSS ) got the idea of printing escape
    maps on silk. It’s durable, can be scrunched-up into tiny wads, can be
    unfolded as many times as needed, and makes no noise whatsoever.

    At that time, there was only one manufacturer in Great Britain that had
    perfected the technology of printing on silk and that was John Waddington,
    Ltd. When approached by the government, the firm was only too happy to do
    its bit for the war effort.

    By pure coincidence, Waddington was also the UK licensee for the popular
    American board game, Monopoly. As it happened, ‘games and pastimes’ was a
    category of item qualified for insertion into CARE packages, dispatched by
    the International Red Cross to prisoners-of-war.

    Under the strictest of secrecy, in a securely guarded and inaccessible old
    workshop on the grounds of Waddington’s, a group of sworn-to-secrecy
    employees began mass-producing escape maps, keyed to each region of Germany
    or Italy where Allied POW camps were regional system. When processed, these
    maps could be folded into such tiny dots that they would actually fit inside
    a Monopoly playing piece.

    As long as they were at it, the clever workmen at Waddington’s also managed
    to add:
    1. A playing token containing a small magnetic compass;
    2. A two-part metal file that could easily be screwed together; and
    3. Useful amounts of genuine high-denomination German, Italian, and
    French currency, hidden within the piles of Monopoly money!

    British and American air crews were advised, before taking off on their
    first mission, how to identify a ‘rigged’ Monopoly set — by means of a tiny
    red dot, one cleverly rigged to look like an ordinary printing glitch,
    located in the corner of the ‘Free Parking’ square.

    Of the estimated 35,000 Allied POWS who successfully escaped, an estimated
    one-third were aided in their flight by the rigged Monopoly sets. Everyone
    who did so was sworn to secrecy indefinitely, since the British Government
    might want to use this highly successful ruse in still another, future war.
    The story wasn’t declassified until 2007, when the surviving craftsmen from
    Waddington’s, as well as the firm itself, were finally honored in a public
    ceremony.

    It’s always nice when you can play that ‘Get Out of Jail Free’ card!

    I realize some of you are probably too young to have any personal connection
    to WWII
    (Dec. ’41 to Aug. ’45), but this is still interesting.

  11. Great story Stan about the Monopoly “Great Escape”! I never was fond of Monopoly, but this story has raised this game now in my eyes.

  12. EG-
    Glad somebody enjoyed it, and fortunately my father Ted never had to use his silk map to try to escape. He very nearly didn’t come home from the conflict about 5 times that I know of, but he was always mostly a very modest type of fellow, so it often makes we wonder just a bit about what he didn’t care to tell me about. He came home without a scratch, at least physically, and hence I got invented several years later, and am able to write this message. For just one instance, he saw a German officer firing a pistol at him from the door of a railroad car with a large Red Cross painted on the top of it, whereupon his oil pressure gauge went to zero immediately somewhere near the middle of France. He then flew all the way back to England, sweating bullets all the way, of course, and landed safely at his home field. After about an hour or so, his crew chief/mechanic came and found him, and told him that it was a good thing that he didn’t have to fly much further, because when he landed he had about 1 1/2 quarts of oil left in his 17 gallon oil tank! Neither the motor or Ted were harmed, and all they had to do was replace the oil return line that had been shot in half.

    Happy Holidays, and Peace on Earth~

  13. Mark-

    That is excellent advice. I always like to look at the rejections examiners give in similar applications. It can tell you a lot.

    What seems to be the issue? Is it that this class has a bunch of examiners that are strict, or did you get the sense that the rejections were appropriate and the inventions were failing to demonstrate a uniqueness? In my experience with game inventors they frequently will mix the rules of two or three games and believe they have a patentable game. That, of course, is the very definition of obviousness.

    I’d like to pursue this with some follow-up articles. Everyone can understand game inventions so there is probably much we can explain to the masses and newbie attorneys/agents.

    Cheers.

    -Gene

  14. Gene,

    I think a few follow up articles would be a great idea. There is a lot here that both associates and more experienced practitioners can learn from.

    One of the first areas we might want to explore is the 112 second paragraph rejections that these cases are getting (failure to clearly articulate the claimed invention). Half of the cases I looked at were getting 112 second paragraph rejections even after as many as 5 office actions. To put a positive spin on it, this means that there is lots of room for cost savings on both the part of the applicants and the office if these rejections could be eliminated. There is no point in filing a response or trying to determine if a claim is obvious or not if the meaning of the claim isn’t clear.

  15. [...] toys and games can be patented, did you know that? See Patenting Board Games 101. Indeed, sometimes toys and games can be quite lucrative, and when you have the rights all to [...]

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