Charles Darrow, an unemployed salesman, was struggling to support his family during the Great Depression. It was during this time that he claimed to have fondly remembered summers in Atlantic City, New Jersey, and dreamed about being a real estate mogul. These diversions purportedly lead to him formulating what has become the most popular board game of all time – Monopoly®. Friends and family gathered to play the game, enjoying earning and spending large amounts of play money. Darrow felt certain he had a hit on his hands so he contacted Parker Brothers, who initially turned him down, but only after explaining that his game violated some 52 fundamental rules of a board successful game. Thankfully for all those who have played and enjoyed the game over the years, a reported 500 million people and growing, Darrow was not deterred.
Undeterred, Darrow marketed the game himself. As fate would have it, a friend of Sally Barton, the daughter of Park Brothers’ founder, George Parker, bought the game. At the time Mrs. Barton’s husband was the President of Parker Brothers. One thing lead to another and eventually Parker Brothers became convinced that this game, with minor modifications, could be a huge success.
As a result of his invention Darrow became the first millionaire game inventor, thanks to royalty payments. The irony, however, is that Darrow may not have invented the game at all, but rather he may have taken a locally popular game and made only a few changes. By the time Parker Brothers realized that Darrow may not have been the true inventor the game was already a huge success. In order to protect the game and its investment the decision was made to buy up all patents and copyrights on any related game, thereby ensuring the monopoly on Monopoly®.
Thus, the story of Monopoly® provides inspiration to inventors who at first are told no, and for companies who acquire intellectual property rights.
The first lesson for inventors is that you can indeed patent a board game. In fact, since 1976 there have been 1,241 US patents issued with “board game” being in the title of the patent itself, and 3,828 patents where “board game” appears somewhere within the patent. Many inventors skip the step of filing a patent application on their board game, which for those that turn out successful would be a mistake. Having patent protection on your board game allows you to prevent others from making, selling, using or importing a game that would infringe your patent. It also would give you an asset to transfer or license if there is enough interest in your game. Some of those 1,241 U.S. patents are design patents, which are a weaker type of patent that only protects ornamentation (i.e., the way the board game looks, not the method or rules of play), but a design patent is cheaper and much quicker to obtain, and is at least some protection. It may also provide a worthwhile advertising boost if marketed correctly. During the pendency of any patent application you can say “patent pending” and once a patent issues the game is “patented.”
For companies, the failure to investigate ownership of an invention prior to licensing or acquiring the rights can be extremely problematic. Many companies will investigate what patents are out there prior to making an offer to acquire a license or acquire the patent itself, thereby not falling into the potential trap faced by Parker Brothers; namely having an enormously successful property without owning all of the associated rights. Due diligence is always appropriate in any business dealing, with the amount of diligence and investigation corresponding to the amount of the investment and potential return. Of course, sometimes in the business world things move fast, mistakes are made, or perhaps a choice is made that the risk presented doesn’t seem that great and the expense of much diligence unwarranted given the likely return on investment. But diligence up front and acquiring rights before there is an issue, or walking away if things look to messy, may be the best choice unless the likely return will be great enough to warrant the risk. At the end of the day it is about making sure you operate in a business responsible manner rather than making decisions without appropriate consideration.
All worked out well for Darrow, but what if he had invested everything in the game, it took off and then others with superior rights were able to stop him in his tracks? This is a cautionary tale for inventors and the fact that Darrow got lucky should not to be lost. Moving forward without reasonable investigation that a patent search can provide is risky and can find you investing unnecessarily large sums of money in a project that will likely never get off the ground. Thus, it is always wise to start with a good patent search. It is better to spend an appropriate sum investigating on the front end. It will make any patent application you file better, because you will know where to focus your description to maximize the likelihood of articulating a positive uniqueness between your invention and the prior art. And, if there are real impediments to obtaining a patent you can cut the project before significant sums have been invested.