How to Patent a Toy

Typically, toys are simple products and relatively easy to manufacture. This makes toys an easy target for others to copy and compete with the original inventor. Obtaining patent rights on a toy is especially important if you wish to prevent others from copying your invention.

A quick google patents search places the first granted patent by the United States Patent and Trademark Office (USPTO) described as a toy on November 7^th, 1882. Currently there are over 130,000 patents related to toys with 7.8% of those assigned to Mattel, Inc. the owner of Barbie.

Can You Patent a Toy?

Yes, you can patent a toy. It is important to verify that your toy is eligible for a patent before continuing the patenting process. A patent attorney is the best person to provide advice and help determine what aspects of your toy may be eligible for a patent.

The eligibility criteria for a toy patent are the same as for other patents.

Eligibility criteria for a toy patent includes:

• Subject matter
• Novelty
• Nonobvious
• Usefulness

Subject Matter Eligibility

To be eligible for a utility patent a toy must be either a process, machine, manufacture, or composition of matter. Depending on the toy, it may be eligible under one or multiple of these categories.

A design patent on a toy must be for the ornamental design of the toy. A design patent protects the aesthetic appearance of the toy.

For example, say you invented a board game with a mechanical arm to move the pieces and discovered a new material for the pieces along the way.  Different parts of the invention may qualify for a patent under different subject matter categories.

Novelty

The toy must be novel, meaning new and never having been done before. Get familiar with the term “prior art” before you begin the application process.

Prior art is any published literature describing any part of your claimed invention. Patent examiners spend a lot of their time searching through data bases to find prior art. You may not obtain a patent on something that already exists in the prior art. Prior art includes patents, patent applications, non-patent literature, and anything else that is publicly available. This includes literature published in a different language, only available in print in a library, and even business marketing materials.

Just because there is some prior art for your invention does not mean you cannot patent other aspects of your invention. Take for example the board game described above. If another board game already exists that uses a mechanical arm to move the pieces, you cannot patent this aspect of the game. On the other hand, you can patent the process of playing the new game, because it has never been done before.

Nonobvious

The toy must not be obvious. Obvious to whom? The USPTO uses a standard called a Person Having Ordinary Skill In The Art (PHOSITA).

If a PHOSITA would find the invention obvious, then it is not eligible for a patent. What a PHOSITA would find obvious varies with the art category and is subject to some debate.

A PHOSITA in the art of making toys would vary based on the nature of the toy. In considering a complex mechanical toy such as a remote-controlled drone, the USPTO would likely determine a PHOSITA is a mechanical engineer. If the toy is simpler such as a new spinning top, the USPTO might determine a PHOSITA is an average citizen.

Useful

The toy must be useful. This is a very low bar to meet, nearly anything can be used as a toy.

Design vs. Utility Patent for a Toy

You may file a utility patent, a design patent, or both to protect a toy. A utility patent protects the functional aspects of the toy, and a design patent protects the aesthetic appearance of the toy.

Consider the example of the board game with a mechanical arm to move the pieces. A utility patent could protect the mechanical arm, the method of playing the board game, and the new material. A design patent could protect the appearance of the game.

If the invention does not have a physical appearance, it would be difficult to obtain a design patent. Say that your toy is a set of instruction of how to play a new version of hide-and-seek. A utility patent could effectively protect the new method of playing hide-and-seek, but a design patent would serve little purpose.

Alternatively consider that your invention is a new teddy bear. The only thing new about this teddy bear is that it looks different than any other teddy bear made before. It would be difficult to get a utility patent on this teddy bear because it does not offer any new functional benefit, such as using a softer material. On the other hand, a design patent would protect the appearance of this teddy bear and help prevent others from copying the new look.

When deciding whether to apply for a utility patent, a design patent, or both, it is important to consult with a patent attorney. A patent attorney will consider your invention, and what you plan to do with the invention to provide guidance on which type of patent offers the most benefit.

Step-by-Step Guide to Patenting a Toy Product

The process for patenting a toy is similar to patenting other inventions. It starts by inventing a new toy and ends with a granted patent preventing others from copying your toy.

Step 1: Turn Your Idea into an Invention

Every invention begins as an idea. For this idea to become eligible for a patent it must be transformed into an invention. The idea must be tied to something in the real world.

Transform your idea for a toy into an invention by building a prototype. Test out the prototype and make improvements to it. Consider all the different variations of your toy that you can think of.

Step 2: Contact a Patent Attorney

An inventor should contact a patent attorney once they have an invention, they are considering patenting. Although not required to file a patent, it is highly advisable to use the service of a patent attorney.

A patent attorney can assist an inventor on every step of the patenting process, and draft strong claims that ensure the invention is adequately protected. A patent attorney will help the inventor to decide whether to file for a utility patent, a design patent, or both.

Step 3: Perform Market Research

A patent provides an economic incentive for people to invent new things. There isn’t much point in applying for a patent if you can’t profit off the toy. Performing market research helps the inventor make an informed decision whether paying the cost of a patent application is worth it.

Before beginning the patenting process, make sure you understand the market potential of your toy and have a plan for how to make money from having a patent.

Step 4: Conduct a Patentability Search

The USPTO requires an invention to be novel so a patent cannot claim anything that already exists. Before beginning the application process, an inventor must explore what has already been done to make sure they can patent their invention.

A patentability search, also known as a prior art search, attempts to discover as many relevant sources as possible that might be used by the USPTO to prevent a patent being granted. An inventor should always do their own preliminary research to understand the technological field.

A good place for an inventor to start conducting their own research is Google patents, Google scholar, and the USPTO patent database. Try using different combinations of Boolean and keyword searches. Google patents has a function that shows related patents at the bottom of the page. Explore as much as you can. The USPTO has a step-by-step tutorial of how to conduct a preliminary patent search.

Although inventors should conduct their own research, it is recommended to use a professional researcher. A patentability search can be conducted by a patent attorney, or a patent research company. Professional research services generally have subscriptions to databases, giving them access to more sources than an independent inventor would have.

If an inventor is not trained in performing research, they may miss important prior art references. Using a professional researcher provides the highest level of confidence that your toy is unique, and worth taking to the next step in the patent process. A professional research company may charge anywhere from $100-$1,000+ for a patentability search depending on the complexity of the toy.

Step 5: Determine Inventorship and Ownership

An inventor is entitled to ownership of a patent for their invention. Who the inventor is might not always be clear.

A person is considered an inventor if they contributed to the conception of the invention. If multiple people contribute to the conception, they are all considered inventors. If a person is a named inventor on a patent, they have rights to the entirety of the patent.

Take for example the board game with a mechanical arm described above. Say inventor 1 came up with nearly every aspect of the invention but inventor 2 suggested the mechanical arm should have one extra claw. If the patent application includes that one extra claw, inventor 2 is entitled to joint ownership of the entire invention. In this case it might make the most sense to file two separate patent applications, each with different inventors.

If there are two or more inventors, each can separately, and without permission of the other, use and license the use of the patent. This can be an issue because co-inventors can become direct competitors of each other. To prevent this issue from arising, co-inventors may sign a contract before filing the patent application. They may agree to not compete, or they may form a company that they all own and assign the patent rights to the company.

Most companies include intellectual property clauses in their employment contracts assigning all employees ideas and inventions to the company if made “in the scope of employment.” If you invent something during your job, for your job, and file a patent for it, you may be considered the inventor, but the company owns the rights to the patent.

If you are employed, it is especially important to read and understand your employment contract. Consulting a patent attorney is highly recommended to interpret the meaning of intellectual property clauses in employment contracts.

Before proceeding with a patent application discuss with your patent attorney who conceived what aspects of the invention. Discuss with all inventors how credit for the invention should be allocated.

Step 6: Prepare the Patent Application

Most inventors use the services of a registered patent attorney to prepare and file the patent application. Although an inventor may file and obtain their own patent, there is no guarantee that the patent would sufficiently protect the invention. Each patent application has several forms that must be filled out and submitted. The patent specification can be drafted from scratch or by using templates found online.

If you are an individual inventor, you should also fill out the certification of micro entity status form to reduce the amount of fees due. All applications must be submitted to the USPTO in English.

Applying for a Utility Patent

A utility patent application requires the following:

• Utility patent application transmittal form
• Application data sheet
• Information disclosure sheet
• Specifications
• Drawings
• Oath or declaration
• Fees

Prepare drawings of the toy, fill out the required forms, and draft a patent specification.

The specification includes a written description of the invention and claims. The specification should have an abstract, a background of the invention, a brief summary of the invention, a brief description of the drawings, a detailed description of the invention, and claims.

Applying for a Design Patent

A design patent application requires the following:

• Design patent application transmittal form
• Application data sheet
• Information disclosure sheet
• Drawing disclosure
• Specification
• Oath or declaration for design patent

Prepare drawings of the toy, fill out the required forms, and draft a patent specification.

The drawings show the actual ornamental design claimed by the patent. The specification includes a description of the drawings, and a single claim.

Step 7: Submit the Patent Application

The typical method of filing a patent application is using the USPTO’s Electronic Filing System (EFS-Web). Navigate to the EFS-Web portal and create a USPTO account. The required documents are uploaded to EFS-Web in PDF format and submitted. Fees are also paid through the EFS-Web portal.

Applications can also be filed by mail or delivered in person to the USPTOs main office in Alexandria, VA. Applications should be mailed to “Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450.” Applications filed by mail or in person are charged an additional fee.

Step 8: Wait for Approval (Notice of Allowance)

It takes some time for the USPTO to start examining an application due to the considerable number of applications received. The time it takes for the USPTO to begin examining a patent varies by the technological field of the toy. The historical time to receive a first office action is around 18 months. Very few applications are approved on the first office action.

The applicant then fixes the issues the USPTO indicates in the first office action and resubmits for a second examination. If the applicant correctly fixes all the issues, then a notice of allowance is issued. The typical amount of time for a patent application to make it to an allowance or final rejection is around 24 months.

While the application is pending you may view the status using the USPTOs Patent Application Information Retrieval Tool (PAIR). Login using your USPTO account. PAIR shows where your application is in the process and any action items that you need to address. Correcting issues or uploading more documents is done in the EFS-Web portal.

Step 9: Petitions and Appeals

If your application is rejected a second time you may appeal the decision. Appeals at the USPTO are heard by the Patent and Trademark Appeals Board (PTAB). PTAB judges differ from normal judges because they have considerable experience and expertise in patent law.

The judges will review the examiner’s decision, hear arguments from both the applicant and the USPTO, and make a final decision on whether the patent will be granted or not. To appeal a final rejection, file a notice of appeal in the EFS-Web portal and pay the appropriate fees.

Like a normal court of law, an individual can represent themselves in an appeal hearing, but using the services of a patent attorney is highly recommended.

Step 10: Use Your Patent and Enforce Your Rights

Just because you have a patent doesn’t mean that people won’t infringe your patent. It is the responsibility of the patent owner to enforce the rights granted by the patent. If you think someone is infringing your patent, you should contact them in writing and explain why you think they are infringing your patent and ask them to stop.

If they do not stop, you can initiate a lawsuit in a federal court and attempt to stop them from infringing your patent and for damages in lost profits. In court, your patent is a valid legal document that defines your invention and will be used to prove infringement.