Inventing New Products/Inventions/Game... copyright and patent?
QUESTION: Dear Penny,
I've had this prototype for a game locked in a briefcase for years. It's for a board game, and the parts were printed using a PC and drawing software. I think I have to file for a copyright to protect its design, that is, the way the board and other parts of the game look. Does that mean that I have to have a finished design exactly how the game is going to look? How do I protect the rules or the way the game is played? Do I need a patent besides the copyright? Thanks in advance.
Merry Christmas & Happy Holidays!!!
ANSWER: Hello there Rick,
Here are my answers to your questions:
1. I've had this prototype for a game locked in a briefcase for years.
a) Have you ever disclosed or shown it publicly? If so, likely it would not be patentable as the US only grants a one-year grace period before one "must" file a patent were it publicly shown and its details clearly explained.
b) If it qualifies for one and, from a commercialization viewpoint, the numbers it would cost to produce and sell should be within the range of similar games. Don’t forget to carefully cost-out parts, box, graphics, board, instructions, etc etc etc.
2. It's for a board game, and the parts were printed using a PC and drawing software. I think I have to file for a copyright to protect its design, that is, the way the board and other parts of the game look.
a) Agreed. It’s cheap enough and has stronger legal consequences than a formal patent if one came across a copy-cat(s).
3. Does that mean that I have to have a finished design exactly how the game is going to look?
a) If it is not how the design of the game will look when readied for market why would you copyright it? I mean, the idea is to protect the design so naturally it makes sense to have a finished design.
b) Have a student at a college help or talk to a Dean or advertise on Craigslist for someone with design expertise and give he/she stock in the company or a promise to pay XXXX if it ever makes money - if you can't afford a professional design.
c) However, were it me, I'd submit what you have to Marradesign.com to see what Mike thinks - after you read his web site info.
4. How do I protect the rules or the way the game is played? Do I need a patent besides the copyright? Thanks in advance.
a) Well, there are several opinions on this. If Mike gives you a thumbs after he renders his opinion and provides you many pages of research (for around $100), my answer would be, Yes. However, Mike being a toy and game agent and an industry expert, “usually” doesn't waste time with formal patents because toys/games lose their shelf-life after a year or two and are replaced (so spending a ton of money on a patent could be a waste of time). It could be years before a patent issued. But let’s look on the bright side so I'll reserve my opinion in favor of what an expert says in the field of toys/games.
b) You could also (as long as you've not publicly disclosed it in the past), write and file a "Provisional Application for Patent" (PAP). It costs $125 payable to the US Patent Office and buys you the (a) legal right to use "patent pending" (if only for a year which will give you time to find a Licensee or have Mike represent the product if he deems it worthwhile).
Note: Toy/game execs fly to his house to look at his inventory as opposed to regular agents who must set quarterly appts to show client's inventions to corporate execs.
Read this LINK by Rich Stim:
As to writing a PAP, it is not complicated and definitely doesn’t require legal language. Understand, no one at the patent office will read what you've written, at least during the first year, as you're only submitting a PAP. BEFORE the year is up, an attorney or agent may be submitting for you a formal Non Provisonal in which case the two will be joined in what is called a “File Wrapper” and then the PAP may be read or not. A PAP is an Application not a formal “Non Provisional (Utility) Patent Application” usually written and submitted by either a patent attorney or a patent agent (they take the same Exam as Attorneys just not the general attorney exam to also practice Divorce, Taxes, Real Estate etc or to represent clients in a court of law). You merely write on a sheet or two or more what the game is all about, how it's played, etc etc. You draw a sketch or two of the board and pieces. - dovetailing the two so one can see what you're talking about in your writeup. Read the following link: http://www.ipwatchdog.com/2011/12/22/patenting-board-games-101/id=21356/
If you're planning the licensing route it would be important to first get a Patent Search done by a professional (if you get the go ahead from Mike re the game itself). The search can cost no more than $250 (I generally do not recommend attorneys or agents do the search as they, in my opinion, do not specialize in searches). The search results will be accompanied by a written legal opinion letter on the letterhead of a registered patent attorney the search company uses (but not all search companies provide written legal opinions from attorneys as they are cheap companies). IMO, a search without a legal opinion letter is (words escape me). Contact Patent Search International in MD. They'll render the search in a week or two (depending on holidays) and you'll know one way or the other whether, in the opinion of the attorney rendering the opinion which will be (a) based on your description (b) what the patent searcher found (usually resulting in eight to ten relevant patents) and (c) the attorneys opinion. So you're total cost is $250 for the search and $125 (fee changes yearly) to file your write-up at the patent office (if your write-up is less than fifty pages otherwise it will cost a bit more). It secures at the patent office a filing date/registration number and buys you one year of patent pending. WITHIN that year you decide if you are spend money on hiring an attorney or agent to write the formal Non Provisional. Note: patents can take as long as three plus years to issue. So you need to get Mike's opinion on what the shelf-life of game is. If it's one or two seasons it may not be worth spending the bucks to have an attorney or an agent write and submit a formal patent application (unless you'd like a "status" patent that is). A Provisional will buy you a year..........for $125. You will need to download and fill in three Forms off the patent office website site to attach to your writeup. You then incluce a check to cover the Filing fee and mail it all by Express Mail (not registered or certified). Before you exit the post office your invention will be in patent pending for one year. Of course, it's slightly cheaper to file the PAP electronically but I'm old school. I like to send copies of what I wrote/submitted in case the patent office claims they didn't get all pages so stick one with an extra fee.
I suggest you log on the patent office's web site at www.uspto.gov and steer your way over to the Inventor Resource Center (there are two of them).
Let me know if you need anything else – especially links to the PAP patent office Forms you must fill out and attach to your write-up.
Disclaimer: the above is educational and not legal advice. See a patent attorney or patent agent for legal advice.
---------- FOLLOW-UP ----------
QUESTION: Dear Penny,
Thank you for helping me. I'm still working on (digesting) the information you provided as there's a lot of knowledge in there. I tried the game once with family (kids) but then I started wanting to do this and that, and ended up storing it in the attic :-P I'm surprised that games last only 1 yr. Maybe I'm misunderstanding something... Why it's calculated to only 1 yr? I'm thinking about games like Jeopardy & Monopoly for example?
You wrote: I'm surprised that games last only 1 yr. Maybe I'm misunderstanding something... Why it's calculated to only 1 yr? I'm thinking about games like Jeopardy & Monopoly for example?
Here's the thing, you need to speak to an expert like Mike Marra in the toys and games field. My example of using one year, was an example hence why I've advised you to speak to an expert in the field. If your game is in the same field as Jeopardy or Monopoly and since it's been laying around for years perhaps by now it's already been done in a different way. If that category is being sought on Wish Lists for next year by one or more toy/game designer/publishers then Mr. Marra will likely know. They issue their Wish Lists a year in advance so the sooner you contact Mr. Marra the better.
Having it sitting around already for a few years likely its novelty may be too old by now since online games is what's "hot" right now. So call Mr. Marra to find out what the demand is, if any for 2013.