In a recent decision ( O/0390/25), the UK IPO has refused protection for a patent application which related to a server system for managing real-world gathering events in an online game. The decision illustrates how the UK IPO will typically approach a video game patent to determine whether it is excluded from patentability under s. 1(2) Patents Act 1977 ("PA") as a computer program and/or a method for playing a game.
Our recent article here considers the options for protecting video game mechanics through copyright and patents, and includes examples of some video game inventions which have been found patentable by the EPO Board of Appeal. As this recent decision shows, protection of video game patents requires a "technical effect" attributable to a feature of the invention to be shown by the applicant.
The invention
This decision concerned AR or MR technology similar to that popularised on mobile by games such as Pokémon Go, and more recently by various VR titles, in which players of a video game interact with characters and other content which their device causes to "appear" in their physical environment.
The application was filed by Bandai Namco, and concerned an open world online game in which players may seek to gather in a real world location nominated by a user. The below diagram shows the map screen displayed on user devices, depicting a meeting point (pin) and the locations of players (star) and enemies (x).
Claim 1 was construed as relating to a system which initiates a gathering event that is sent to user terminals with a map to the gathering location, and then determines the success or failure of the event based on gathering conditions which require that a "directing" user and a "participating" user arrive at the location, and rewards the users if the gathering event is deemed a success based on the positions of the users.
Approach to excluded subject matter
The key question for the Hearing Officer to determine was whether the claimed invention fell within s. 1(2)(c) PA, which excludes from protection a scheme, rule or method for playing a game or a program for a computer, to the extent that a patent or application for a patent relates to that thing "as such".
The Hearing Officer followed the normal UK IPO approach of applying the four step test set out in Aerotel ( [2007] RPC 7 at [40]) which requires the following:
- properly construe the claims;
- identify the actual or alleged contribution
- ask whether it falls solely within the excluded subject-matter; and
- check whether the actual or alleged contribution is actually technical in nature.
Additionally, the Hearing Officer considered the usual five signposts as restated in HTC v Apple ([2013] EWCA Civ 451 at [148] to [150]), which are used to determine whether a technical contribution has been made by a computer program:
- whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
- 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;
- whether the claimed technical effect results in the computer being made to operate in a new way;
- whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer; and
- whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
Outcome
The Hearing Officer considered that the reward mechanism in the claim could not form part of the invention's contribution, because a system for awarding points or other rewards to players who achieve an objective in online games is well-known.
Similarly, the implementing technology used was also known (such as GPS location, map display, sensor data and standard smartphone hardware) and did not form part of the alleged contribution. These were the means through which the contribution was achieved, rather than part of the contribution itself.
With those elements disregarded, the relevant contribution was found to be, in essence, a system for running a real-world gathering event in a game, determining success based on players' physical locations. Or put more simply, this could be considered an alleged contribution of "gathering of users at the specified gathering location in real space".
The Hearing Officer went on to consider whether that contribution fell exclusively within the excluded subject matter. Although the patent claim referred to users meeting in the real world, which arguably could be a contribution which occurred outside the computer, this was still a contribution which related to the gameplay method (i.e. meeting in the real world), and it was therefore excluded subject matter. There was found to be no other contribution made by the computer programs beyond their effect on the game as such.
Concerning the fourth step, i.e. whether a technical contribution had been made by the invention, the applicant had sought to argue that the invention involved a technical process lying outside the device, carried out by technical means. However, this was rejected by the Hearing Officer on the basis that the means used were not part of the technical contribution, and the physical gathering of users in the real world is not technical in nature.
This conclusion was corroborated by reference to the HTC signposts, including that there was no effect outside the computer beyond playing a game, no computer program running at the level of computer architecture, or resulting in a better computer, and that the problem overcome was one of gameplay using known technology.
Conclusion
Stories such as the Palworld dispute have led to an increased interest in video game patent applications of late, as games companies explore options to protect their market position against alleged copycat titles. This decision is a reminder that there is a need for a technical effect to be demonstrated in order to register games mechanics.
Systems which involve the interaction of hardware and software are often considered potentially suitable for patent protection, on the basis that they do not relate exclusively to a contribution within the software, and a VR game involving interaction with the real world may be presented to the registry in a similar fashion. However, it is important to be mindful that computer software is not the only excluded subject matter which needs to be avoided under s. 1(2) PA; gameplay methods as such are also excluded.
Ultimately, this was found to be a patent relating to an in-person meeting to play a game, and the Hearing Officer saw nothing technical in the way that was achieved.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
