Copyright, trademark or patent?

Let me offer a personal experience with intelectual property (IP) issues as related to my patent for jump-shooting action figurines and the resulting table basketball game and other toys. I am not offering any legal advice here, as that would be illegal for a non-lawyer like me.


First decision involves the kind of protection you can get for your creation. Start at this excellent blog to decide if you need a copyright, trademark or even a patent protection. The U.S. Patent office offers legal, but unispiring definitions, and their home page points to extensive information on patents and trademarks or to the U.S. Copyright Office. Even better, go directly to NOLO, the publisher of excellent, reasonably priced books with advice on many legal subjects including copyright, trademarks, patents, and business startup to divorce-thyself manuals.

I used all of those sources to decide that

• my figurines were patentable,
• I wanted to create a logo and register a trademark for it, and
• the figurines and the table basketball game would carry copyright notices and their samples would have to be deposited with the Library of Congress. 

You may want to consult a lawyer even for that basic decision. Although English is my second language, I decided that I can decipher legal mumbo-jumbo well enough to decide what protection I wanted, and even to try the most difficult step, patenting the figurines by myself. It was not easy, and the patent process took a few weeks of my time. Fortunately, the excellent book from NOLO Patent It Yourself by David Pressman provided all the info including forms and letters anybody needs to write (and draw) their own patent - or decide to get that lawyer.

There is no point in trying to summarize his 500+ pages and forms. The book takes you through the process of deciding what protection you idea can get, and points you to more information or other NOLO books if your needs do not include patenting. Next, it shows you how to search for similar ideas already patented, and what the search results tell you about the patentability of your idea. It then leads you step by step creating a complete patent application. It even tells you where to mail it and how to pay the application fees. It describes the USPTO application process, tells you how to respond to their 'office actions' to get get the patent, and even how to go about licensing your eventual patent.

Creating a complete patent application is a long process. The decision to do it yourself or hire a lawyer comes to the usual choice: if you have the money to spare ($5000 or more, sometimes MUCH more), you may be better off hiring a lawyer. If you don't, and you like challenges like I do, you may find that it is not that hard.

Your final decision involves the 'prosecution' of your application. It is likely that the first USPTO 'office action' will reject it. Again, 'Patent It Yourself' tells you how to respond, and sometimes recommends to get a lawyer at this point. You may even enjoy convincing the USPTO to accept your reasoning as much as I have. Their MPEP (Manual of Patent Examining Procedure) tells you how the examiner makes the decisions - and how you can challenge them.

Getting the patent took several years. It is a slow process under the best circumstances. If you have to defend your application with appeals and reissues to regain ground lost in the 'fight' (to broaden your claims after the examiner chopped them down), it gets even longer. But I got my patent - and then had to find a way to 'monetize it.' But that will be another post.

So, would I get the next patent without a lawyer's help? By all means - perhaps I am just too cheap... :)

[from my WordPress blog.]