Article 5, paragraph 1 of the Patent Law of the People’s Republic of China (PRC) stipulates that no patent right shall be granted for any invention-creation that is contrary to national laws.
In China, gambling is a criminal act. Article 303 of the Criminal Law of the PRC provides for the crime of gambling. Article 70 of the Public Security Administration Punishments Law of the PRC, issued in 2005 and revised in 2012, also specifies penalties for certain gambling behaviours.
Therefore, when the subject of a patent application is in relation to gambling, it is difficult for a patent application to be granted a patent right.
On the other hand, gambling-related games are popular. With the growing scale of the games market, the importance of protecting gaming creations has become increasingly prominent for obtaining monopolistic competitive advantages.
As a result, there are more patent applications related to this kind of game. However, whether they can qualify for patent protection is still controversial.
Playing the game
In the re-examination decision no. 127798 issued by the China National Intellectual Property Administration on August 1, 2017, the application in question (no. 201280045416.4) is directed to a hybrid gaming system and method.
In the decision, it is held that:
- The content of player interaction is only contingent game values and player game values, without the content and meaning of monetary value;
- After a final game result is determined, game values cannot be redeemed for cash or prizes;
- Players get changes only in game values, without changes in property values;
- The specific connotation of account balance, credit, and ante is not limited to money, the amended specification is not related to any change in monetary value, and the solution as a whole is provided for entertainment purposes, such as social games; and
- The specification and claims thereof do not involve gambling and exchanging chips for money, nor do they record any gambling-related content.
“By way of the modifications and deletions, the applicant delimited the technical solution thoroughly from ‘gambling’.”
Yonggang Wang, CCPIT
As a result, the application in question does not comprise any content that is contrary to national laws, and therefore, does not fall within the scope excluded from patentability under article 5, paragraph 1 of the Patent Law.
Before the re-examination decision was made, the examiner of the substantive examination department pointed out in the rejection decision that the application in question was directed to an online gambling system and an operation method thereof, which involves:
- Providing wagering by a gaming server;
- Allowing players to set up accounts that are funded using credit or debit cards, cheques, wire transfers, etc, with players drawing on their accounts to provide wagers;
- Providing, by a processor, credits to the winners’ accounts;
- Placing wagers using points (can be exchanged for money); and
- Debiting an account for each wager.
Therefore, although the applicant amended “gambling”, “wager”, and “roulette machine” in the specification as “gaming machine”, “bet”, and “roulette wheel”, the essence of the application in question is still an online gambling system, and cannot be granted a patent right.
The re-examination decision and the rejection decision gave diametrically opposed conclusions. What efforts have been made to transform the application in question from “illegal” to “legal” and obtain a favourable re-examination decision result?
Looking at the history of this case, the applicant had amended the specification three times. In the amendment made for the third time in response to the rejection decision, the applicant deleted “lottery” and “coupons”, changed “points can be redeemed for prizes” to “points can be got”, and “wager” and “bet” to “input”.
The amendments made on the previous two occasions comprised (in addition to the amendments on which the examiner made comments in the rejection decision), the deletion and modification of “roulette wheel”, “gambling”, “casinos”, “money”, “wager”, “gambling administrator”, and “wager” mentioned multiple times, and the deletion of the contents related to changes in the monetary value such as “allowing users to set up accounts that are funded using credit or debit cards, cheques, wire transfers, etc”, “draw on their accounts to provide wagers”, “provides credits to these accounts”, “cash”, and “credit card information”, etc.
“Where there are gambling-related terms in a patent application, and its technical solution seeks for protection of a gambling act for obtaining monetary benefits, then the patent application cannot be granted.”
Limiting the scope
The multiple amendments and deletions mentioned above are the secret to bringing the application in question back to life. By way of the modifications and deletions, the applicant delimited the technical solution thoroughly from “gambling” and made it clear that the scope of the technology to be protected is limited to the “game” category, and players can only obtain virtual benefits.
It cannot go beyond this category and apply to the “gambling” field for monetary benefits.
As can be seen from this case, where there are gambling-related terms in a patent application document, and its technical solution seeks for protection of a gambling act for obtaining monetary benefits, then the patent application cannot be granted a patent right because it is contrary to the relevant laws and regulations.
However, where the technical solution sought to be protected by a patent application is to be used for entertainment purposes or as a carrier for fulfilling social purposes, and does not involve increase or decrease of actual money, the patent application does not violate the laws and regulations.
Of course, technology itself is neutral in nature and cannot be good or bad. The same technology, when put to a different use, may produce opposite results. The case mentioned above illustrates this point to a certain extent.
Therefore, in drafting relevant patent applications, it is necessary to exclude the use of “gambling”-type terms, focus on the entertainment of games, and eliminate or limit the gambling function of the games.
In the examination process of this kind of application, attention should be particularly paid to the amendments to the specification to ensure that there are no gambling-related terms throughout the text, and that the overall technical solution does not have any features associated with monetary benefits. In these situations, it is worth remembering: “legal” before “patentable”.
Yonggang Wang is a patent attorney at CCPIT Patent and Trademark Law Office where he has worked since 1996. He is deputy director of the firm’s litigation division. He can be contacted at: email@example.com
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