There has been widespread reporting on Nintendo and the Pokémon Company’s announcement that patent infringement proceedings have been commenced in Japan against Pocketpair, the developer and publisher of Palworld. When Palworld was first released in January there were extensive press reports comparing that game with Pokémon, which we noted in our previous article. As that article explains, such reports focused on alleged visual similarities between the characters in each game (as illustrated by the widely-circulated image which we included in our earlier article). 

When writing previously, it was not clear if an IP claim was expected to result, or what IP rights would be asserted, and that article focused on the rights available under UK law to protect game character likenesses. Whilst it now appears that “multiple patent rights” are asserted against Palworld, it is not yet clear what rights specifically are relied upon, the grounds for infringement, or what arguments Pocketpair may seek to raise by way of defence. Nintendo’s choice to rely on patent rights does however suggest that the litigation is seeking to protect gameplay mechanics, rather than the appearance of the Pokémon characters. 

Patent infringement claims are relatively unusual in UK law disputes about rival video games where no hardware is involved. In general, in any patent infringement case which reaches trial, we would expect the following issues to be considered by the court: 

1. how the claims of the patent should be interpreted (seen through the eyes of the notional person skilled in the art); 
2. whether the alleged infringing product falls within the scope of the patent properly construed; 
3. any counterclaim that the patent should be revoked, e.g. because it covers excluded subject matter, or is not novel and/or inventive; and
4. any possible amendments to the patent to overcome the above challenges. 

These are highly fact-dependent questions which (at least in a UK case) would only be answered after detailed written and oral arguments, and with the benefit of detailed expert and factual evidence. Without further information, and whilst this is a live dispute, it is not possible to comment on the merits of the patent infringement case. As most IP disputes do settle before they reach trial, it is also possible that we may never see a court decision in this dispute. However, further information as to the arguments made by each side may become publicly available as the case progresses through the court. 

For the time being, we use this interesting story again as an opportunity to explore in general terms an aspect of video game IP we did not consider in our previous article, namely the available protection for video game mechanics. We look at this ever-popular topic from the perspective of UK/EU law only, noting that relevant law and practice may vary in other jurisdictions such as Japan. 

Specifically, we explore copyright protection and patent protection. As will be noted, establishing copyright infringement can be difficult in a case where only gameplay mechanics have been copied, unless a sufficiently detailed expression of the mechanic idea has been copied. There is also relatively limited scope for patent protection of gameplay mechanics, but it is certainly possible where a "technical effect" attributable to a feature of the mechanics can be shown. Where the challenges can be overcome, a patent protecting the functionality of a game can be a hugely valuable asset. 

The IP protection for pure mechanics explored in this article should not be considered in isolation. Other aspects of a game may also be protectable, such as copyright, trade mark and design right in respect of characters and in-game items as we explored in our previous article. We always recommend taking a wholistic view of all the available IP rights to ensure a game is best protected against potential infringers. 

Copyright protection for game mechanics

Game mechanics are notoriously difficult to protect through copyright, which subsists in the expression of an idea rather than the idea itself. 

If a specific identifiable work embodied in the game has been copied, such as sections of code, artwork or plot, etc., then a copyright infringement case is more straightforward to plead. In addition, where registered trade mark or design rights have been obtained to protect in-game features, it may be possible to rely on these. However, copyright can be of limited assistance where there is not a specific work such as an artwork which has been copied or infringed, and the similarity exists only at the level of a combination of mechanic and/or gameplay features in common. 

The challenge is illustrated by the frequently-cited 2007 Court of Appeal case of Nova v Mazooma, which concerned rival coin-operated pool games. Illustrative of the type of argument made in this case are the below screenshots, which the claimant submitted as evidence of similarity, in that both games are games with prizes based upon the theme of the game of pool (further screenshots relied upon by the court may be found here). 

It was found at first instance that the earlier game had inspired certain features in the later game, but that copyright was not infringed. On appeal, the argument that rights in the individual graphic works forming a pool cue animation were infringed by the rival game’s animation was rejected as no frame-for-frame reproduction had occurred. The argument that the underlying ideas and principles of the game were copied was also dismissed. The court agreed with the trial judge that what had been taken was a combination of a limited number of generalised ideas which were reflected in the output of the program but did not amount to a substantial part of the program itself and which were not protectable by copyright. 

Rejecting the argument about pool cues, Jacob LJ stated: 

No-one would say that the copyright in a single drawing of Felix the Cat is infringed by a drawing of Donald Duck. A series of cartoon frames showing Felix running over a cliff edge into space, looking down and only then falling would not be infringed by a similar set of frames depicting Donald doing the same thing. That is in effect what is alleged here.

In rejecting the claim that the ideas and principles of the game had been copied, Jacob LJ noted that computer software should not be treated any differently to other copyright works:

Not all of the skill which goes into a copyright work is protected – the obvious example being the skill involved in creating an invention which is then described in a literary work. An idea consisting of a combination of ideas is still just an idea. That is as true for ideas in a computer program as for any other copyright work.

This does not mean that a copyright claim could never succeed to protect a sufficiently developed aspect of game mechanics, and in appropriate cases it should certainly be considered as an enforcement option to stop copycat games. However, Nova remains a leading case in the area frequently cited by prospective defendants. 

To succeed in an infringement case it would be necessary for a prospective claimant to avoid abstract descriptions of general concepts, and to argue instead that what has been copied by the defendant is detailed expression of a mechanic rather than an abstract idea, and that what has been copied is an original part of the plaintiff’s game. It is a question of degree, but, e.g. copying the plot of a play can potentially infringe copyright if a sufficiently detailed part of the play is taken. The same would be true for a narrative-driven game, where copying a detailed storyline could infringe. However, simply arguing that a competitor cannot make a first-person shooter based in space because another game did so first will not be enough to succeed in a copyright infringement action. 

Patent protection for game mechanics

Jacob LJ’s comment in the Nova case above, noting that a literary work simply describing an invention will not protect the invention itself, leads us nicely to consider patents, which of course can be used to protect novel inventions. If a feature used in-game is considered new and inventive, then a developer or publisher might consider applying for a patent to prevent competitors from using it. Such rights, when granted, can be extremely valuable. 

On the face of it, patent protection may appear challenging for video games due to s. 1(2)(c) Patents Act 1977, which excludes from protection a scheme, rule or method for playing a game or a program for a computer from being treated as an invention, only to the extent that a patent or application for a patent relates to that thing “as such”. 

In other words, the patentability of any proposed video game invention will depend on whether the contribution made relates to software or a method for playing a game “as such”. This is not a blanket exclusion of video games patents, and advice should be sought in relation to the patentability of inventive new features before they are made public. 

The same exclusion may be found in Art. 52(2) and 52(3) of the European Patent Convention. At the EPO, the registry will typically look for a technical solution to a technical problem when considering whether the invention relates to excluded subject matter as such. 

There is well-established case law outlining the UK approach to determining whether a particular invention falls solely within the exclusion. A four stage test is applied: 

1. properly construe the claims; 
2. identify the actual or alleged contribution
3. ask whether it falls solely within the excluded subject-matter; and 
4. check whether the actual or alleged contribution is actually technical in nature.

The ultimate question in this analysis is whether the contribution made by the invention is technical in nature. There are further “signposts” set out in case law which can help practically to identify whether a contribution is technical. These are: 

1. whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; 
2. whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
3. whether the claimed technical effect results in the computer being made to operate in a new way; 
4. whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer; and 
5. whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented. 

It may be considered that, for pure game mechanics inventions, the above signposts will sometimes present a challenge; mechanics innovations may often be expected to be internal to the operation of the game, and unlikely e.g. to have a technical effect at the level of the architecture of the computer or to result in a better computer, or in the computer being made to operate in a new way. 

Nonetheless, it is clearly possible that a mechanic may have a technical effect. For example, it could be designed to work with a process outside the computer (as in mechanics designed to operate with particular devices), or for a problem to be solved using the mechanic. Various examples may be found of successful applications, which demonstrates the importance of developers considering the suitability of patent protection on a case-by-case basis whenever new features are devised.

For example, the EPO Board of Appeal (T 0928/03) confirmed that a player pass guide mark for use in football-style games was patentable. The guide mark identified the player to whom the ball could most easily be passed. It provided a technical solution to a problem caused by conflicting technical requirements: on the one hand, a portion of an image is desired to be displayed on a relatively large scale (zoomed in); on the other hand, the display area of the screen may then be too small to show the complete playable area. The guide mark could identify suitable players outside of the display area, allowing the display area to be zoomed in to show sufficient detail. This was found inventive over other solutions to the problem, such as superimposing a map over the zoomed in display.

Another EPO Board of Appeal decision (T 0012/08) concerned a patent for a game of the type wherein a player object is moved on a map and encounters game characters. To increase the unpredictability of the game and therefore hold a player’s attention, the invention varied the appearance probability of a character in response to measured time on the physical device. This was found inventive over prior art, such as characters in PacMan which blink after a period of time, or the random evasive movement of tanks in Frogger, which did not suggest use of time as a variable in generating random events. It was found that use of the physical device clock to form a random event generator provided a technical solution to a technical problem.  

That patent (now expired) described a specific embodiment used in Pokémon gameplay to alter the probability of certain characters appearing during morning, day and night time zones, as illustrated by the below character appearance probability table included in the patent drawings. 

The above expired patent will, naturally, not form part of the claim in this case and we await to see which patent(s) are asserted in Japan. We have no doubt there will be more to say on the Palworld case as it develops, and expect that many will be watching how this plays out with interest. 

In the meantime, as our summary above illustrates, the most valuable IP in a video game is not necessarily that which is immediately visible to the player. The video game source code, of course, is protected by copyright. Rights may also subsist at the level of mechanics and gameplay, despite the potential challenges, and even if the majority of disputes in this area tend to focus on the infringement of visible IP such as artistic works and design rights protecting characters, other in-game objects and user interfaces. 

To get an understanding of the registered rights which may protect a particular game, including patents, it is possible to undertake searches at the development stage. Should you wish to discuss how best to approach such searches, or to explore the possibility of protection for your own in-game mechanics, please contact one of the IP specialists in our Interactive Entertainment team.