This article was written with patent lawyers Greg Boyd and Andrew Keisner of New York-based Davis & Gilbert LLP.
US patent law is about to receive its biggest shakeup since the Patent Act of 1952. And it's likely to affect all game publishers and developers. The Leahy-Smith America Invents Act, or AIA for short, which was signed into law last September and gradually phases into effect in March 2013, will significantly change the way companies will apply for and defend their patents.
Historically, game companies haven't commonly defended their works using patent law. The aerospace industry, by contrast, is founded on physical inventions and hard engineering that are firmly bound with patent applications, while game developers tend to create content - play mechanics, graphics, music, story. Experiences, in other words, that are more fitting to copyright protection than patents.
Not that patents are never claimed by game companies. Namco holds, for instance, a patent on minigames played while a main game loads, as seen in PlayStation's Ridge Racer with Galaga, while Nintendo patented Zelda's Z-targeting system for throwing objects. But culturally, patent law isn't as natural a fit for the game industry as it is others; many software engineers argue that patents are a barrier to innovation because they tend to block the sharing of techniques and advances that's a mainstay of software development.
The Act's changes may disrupt all that.
From first-to-invent to first-to-file
The most significant change brought about by the AIA is that no longer will earlier inventions necessarily have priority over newer ones. Currently, even if someone else filed an application for the same invention before you filed yours, in the United States your patent will be considered to have "priority" if you can provide evidence that shows you invented it first.
Starting in March 2013, priority is based on who files it first. That means the onus will be very much on creatives to be proactive, facing them with the obvious challenge of constantly working out when an advance is actually patentable and finding the capital and time to diligently draft the resulting applications immediately. While the old system has certain protections for justifiable delays in filing applications, delays under the new one could lose a developer’s patent protection for its inventions.
Generally speaking, this will grant an advantage to publishers, hardware manufacturers and well-financed developers. But though the AIA provision regarding application date won't come into force for over a year, the race is on for these large organisations to revise their internal practices and procedures so that they'll identify inventions quickly. But for small developers and indies? Without larger companies' resources at their disposal, it seems likely that they'll find the new system harder to negotiate, but a provision - see below - has been made to support them.
The change will increase the use of preemptive provisional patent applications. Though disadvantaged by requiring a full application within a year, provisional applications claim the earlier filing date that's so important to the new system, while also having the benefit of being filed in secret. It's only when the full application is made that their content becomes public.
Keeping it fair for indies
Despite the new measures being best suited to inventions produced by companies with legal teams on hand, the AIA has created a new "micro-entity" status for very small companies and individuals, which offers even lower fees than the "small entity" status. To qualify, a studio needs to:
- Qualify for "small entity" status (be under 500 employees)
- Have been an inventor on fewer than five previous full patent applications
- Not assign the application to anyone with a household income of more than three times the US median
Caveats are extended to those who receive most of their income from places of higher learning, and to those going alone after having assigned patents while working at larger outfits. These benefit both academics and the many new game studios formed by former employees of established companies.
Comments
1This sounds bad for developers. I wonder how this new law will handle a patent being issued to a company when another company has a product on the market that uses that tech or idea already. Would the company already selling have to pay some obscene fee or pull its product off the market?
I have a feeling that the larger corporations are going to patent things that smaller houses just won't feel are patentable. Remember when Amazon tried to patent the idea of buying items online by pushing one button on the website instead of multiple buttons? Which will be the first to patent "a game system using numbers to represent a character's physical attributes"?
As for minigames while the main game loads, that's lunacy. Many games allow the game itself to be played while it loads.
It sounds like the law is just aimed at reducing the headache of lawsuits over which company really has the legal right to use it. Instead of the trials needing to show a lot of prior art, it's going to become a cut-and-dry case of checking when the patent was filed.