This article has been written by Triveni Singal, pursuing the Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.
Table of Contents
Introduction
Everyone is surrounded by products and works created by another person using his/her creativity, labour, intellect, and efforts. Such products or works are called intellectual property.
In all our day-to-day activities, we use a number of these intellectual properties (clothes, mobile software, electronic gadgets, films, songs, paintings, online shopping, etc.). With such widespread utilization, comes the necessity of protecting the property against wrongs, such as infringement in any form. The branch of the law creating rights and duties concerning the intellectual property is known as intellectual property rights (IPR). In this article, we shall focus on one kind of IPR that is, patents, specifically in the field of e-gaming.
Patents
A patent is a statutory right subsisting in a patented product/process, provided by the Indian Patents Act, 1970, for 20 years from the date of priority. As per Section 48 of the Act, the patentee has an exclusive right to:
- Preclude others from making/using/offering for sale, etc., without his consent, the patented product in India.
- Preclude others from using the patented process or using/offering for sale/importing, etc. any product obtained directly from that process in India.
Thus, it is a negative right.
A patent can only be obtained for an invention that is novel, has an inventive step, and is capable of industrial application.
But not all inventions which fulfil these criteria are patentable. Section 3 of the Act provides the inventions that are not patentable such as a computer programme per se.
However, the 2005 Amendment to the Patent Act, 1970 stated that “a computer programme” per se is not patentable “other than its technical application to industry or a combination with hardware”. Thus, a computer programme that possesses a technical qualification to the industry or one which is combined with hardware would be capable of being granted a patent in India. Computer programmes that have the effect of controlling computers to operate in a particular way, where such programmes are embodied in physical form are patentable.
For instance, let’s consider a computer programme for word processing on a general purpose computer would not be patentable. But, a computer programme for printing documents using a printer may be patentable because it produces a technical effect.
Such a patent involved in the performance of a computer realized through a computer programme is called a software patent. It also includes software embedded in a mobile application. This discussion on software patents is crucial to understand the forthcoming parts of the article.
Electronic gaming industry and patents: history and development
Electronic gaming ( called “e-gaming”) encompasses the overall electronic gaming industry from consoles to personal computers and mobile games, online streaming, and also the eSports industry (such as the recent online game Valorant). A video game is usually defined as “an electronic or computerized game played by manipulating images on a video display or television screen.”, and includes console games, PC offline games, online games, and wireless games.
As per the Deloitte India report, 2021, this industry is expected to expand at a compound annual growth rate of 40% by 2022. This data highlights the importance of safeguarding both the creativity and technology that is utilized by this industry.
Patents specifically are employed to protect the inventive gameplay/game design elements, the next-generation hardware, the technical solutions, and the technical innovations such as software, networking, or database design.
For instance, we can consider “Odyssey System”, a video game invented by Ralph Baer, which was granted the first patent in the history of video games in the year 1968. He had designed an apparatus that, once attached to a home television set, allowed users to manipulate rudimentary dots and lines across the television as part of a tennis-like game.
But for most of the coming years thereafter, patents were only utilized to protect the gaming hardware, that is, the actual machines used to play the games. At that time there was no proper distinction between the gaming hardware and the gaming software (the actual games themselves).
Through the development of both technology and the video game industry, the requirement for corresponding patent law concerning computer software arose. For many years, computer programs and software were considered analogous to algorithms, and thus, a patent on these was considered to be a monopoly on a process in the train of human thought.
Gottschalk V. Benson (1972)
This case redefined the ongoing outlook of conceptualizing computer programs in their entirety as a mathematical algorithm.
The court in its judgement left the door open for the possibility of incorporating mathematical algorithms carrying out a certain method within the ambit of computer software, without eliminating the chance of acquiring a patent.
Thus, it was clarified hereby that mere processes employed within the language of a computer program were expressions of an algorithm, but the entire computer program was not an algorithm, per se.
Diamond V. Diehr(1981)
This case marked another turning point wherein the court upheld its above-mentioned decision and stated that although mathematical formulas are non-patentable, processes that involve an algorithm can be patentable subject matter, so long as the patent does not pre-empt the use of that mathematical equation (except in conjunction with all the other steps involved in the claimed process). Furthermore, the court stated that innovation does not become non-patentable “simply because it uses a mathematical formula, computer program, or digital computer.”
Another reason that led to the acceptance of patents as the better route for protection was the menace of reverse engineering since copyright only offered protection for affixed source codes and object codes and not to the primary functional aspects of a computer program. Thus, most of the software could be reverse-engineered and copied, which also benefited by reducing substantial expenditure employed in research and development activities.
Additionally, copyright only protects the music, codes, website designs, characters, etc. involved in a video game/online game, and so any third person could change these aspects but copy the core mechanics of the game.
The current scenario witnesses developers choosing patents as their armor for every aspect of a video game and its development process.
However, despite these developments, there are certain disadvantages to patent protection for the e-gaming industry as enumerated below:
- The industry moves faster while the grant of patents takes a lot of time and money.
- A two-part test formulated in Alice v. CLS Bank (see here) for the grant of software patents:
- whether the patent claims were directed to ineligible subject matter such as abstract ideas.
- whether an inventive concept transforms the claimed abstract idea into something eligible for a patent.
Examples of patents in the E-gaming industry
To complete our understanding of patents and their development in the e-gaming sectors, the following examples of current contents for software patent protection in e-games are apt:
A game engine
It is the main software element of a computer video game or other interactive application with real-time graphics integrated rendering, collision detection, AI, visibility, networking, and file system management into one complete engine. It is used both for the development of video games and to drive the game on the console, smartphone, or computer.
For Example- Torque Game Engine, Truevision3D, etc.
A method or process performed by a game as instructed by the object code executing on a computer or game console
For Example, the software patent “Game system, puzzle game program, and storage medium having program stored therein” (EP1291047) relates to a puzzle game apparatus, a puzzle game program, and a storage medium having the puzzle game program stored therein.
Novel game concepts
For example, the concept of player sanity is patented by Nintendo, wherein, the more insane the player becomes (i.e., the lower a player’s sanity level becomes), the more the player will experience changes in the game that may affect the storyline for the game and/or hinder the player’s ability to progress through the game.
Steps to obtain and protect a patent in the gaming industry
Now that we appreciate the progress made by patents in this sector and some examples of the same too, a question that arises is how to obtain and protect a patent.
Before the actual patent prosecution procedure begins two things must be done. Firstly, the decision must be made as to whether the applicant wants to move forward individually or engage a professional and secondly, a detailed patentability search must be performed to determine the chances of getting a patent (prior art search):
Step 1- Drafting a patent application (Provisional or Complete)- Form 1 and Form 2.
Step 2- Filing the patent application in India.
The forms are filed either electronically or physically or through the post in the Patent Office to secure a filing date. Additional forms to be submitted are:
- Form 5 – Declaration as to inventorship (only to be filed along with the complete application).
- Form 26 – Form for authorization of a patent agent (only required if you are using a patent agent to help you file the application).
- Form 28 – To be submitted by startup or small entity (only required if you are claiming startup or small entity status).
Step 4- Publication of patent application is to be made (Form 9).
Step 5- Examination of the patent application is to be requested (Form 18).
Step 6- Patent is granted.
Step 7- Payment of renewal fee has to be done annually.
To know more about Patents please visit:
Conclusion
There has always been controversy regarding the classification of online games as a whole, that is, whether they are multimedia work, audiovisual work, or, primarily, a computer program.
This debate stems from the fact that modern e-games consist of two parts, firstly, the audiovisual elements (including pictures, music, characters, etc.), and secondly, the software that technically manages the audiovisual elements and allows users to interact with different elements of the game and also with each other in some cases.
Those in favour of the latter, that is a computer program have the following contentions:
- Video games are destined to be played and run using a computer program, with (inter)active implications for users, whereas, on the other hand, audiovisual works imply mostly passive viewer participation.
- The co-authors of audiovisual works are not necessarily the same sorts of authors as those involved in the development of a particular video game.
- The rights requested by producers of video games and audiovisual works do not always coincide.
- Audiovisual works involve certain neighbouring rights that are not always present in video games
Thus, in countries like China, Israel, Italy, Singapore, Spain, etc. video games are considered to be, predominantly, computer programs, due to the specific nature of the works and their dependency on software for implementation.
In contrast, other countries, including Germany, India, Japan, and the United States of America, take into account the tremendous complexity of video games in favoring the hypothesis that video games have a distributive classification. As a consequence, legal protection of the different elements of the game must be found separately, according to the specific nature of each work (i.e., whether it is literary, graphic, audiovisual, etc.).
In 1989, the US Patent Office officially announced it would recognize computer software as patentable. However, software as such is not patentable in India, and this distinction between the patent regimes is of importance in relation to games that are made available online.
A game developed in India, when offered online and made available / downloaded in a country like the US, may be found to be infringing patent rights held over similar functionalities by any person such a country.
Thus, we can conclude that though video games as software are subjects normally excluded from patentability, it is still possible to protect an invention and its technical matter related to videogames through a patent if said matter constitutes a technical solution to a technical problem.
References
- https://www.mondaq.com/india/patent/691544/software-patenting-in-india-and-usa
- https://www.wipo.int/wipo_magazine/en/2014/02/article_0002.html
- https://scholar.smu.edu/cgi/viewcontent.cgi?article=1109&context=scitech
- https://blog.jipel.law.nyu.edu/2018/04/video-games-a-growing-market-and-its-intellectual-property-needs/
- https://www.wipo.int/edocs/pubdocs/en/wipo_report_cr_vg.pdf
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