Source: Pixabay

by HOWARD N. ARONSON, senior partner, Nolte Lackenbach Siegel

People often say, “The best defense is a good offense,” but for toy companies with ideas that they hope are patentable, we say, “The best patent applications start with good searches.”

Perhaps that is what may be learned from a lawsuit against Mattel claiming infringement of Spin Master’s Bakugan patents for action figures (Spin Master Ltd. v. Mattel Inc.). It was not long before Choirock Contents Factory Co. Ltd., whose technology was used under license in the Mecard toys sold by Mattel, asked the Patent Trial and Appeal Board (PTAB) to review Spin Master’s patents, among them a patent for “a toy that transforms by means of a magnetic force” — a toy with a locking element released by a magnet (see below image).

When the dust finally settled, the court had found that Spin Master’s patents were invalid for obviousness, meaning that the patent claimed covered technologies that were already known.

HOW THIS COULD HAVE BEEN AVOIDED

Thanks to the patent process, this expensive and devastating reversal of fortune is common. Spin Master had applied for and had been issued a U.S. patent, a government grant of powerful rights of exclusivity — a monopoly — for 20 years, presumed valid by the U.S. courts. But the application process failed to reveal that with regard to this invention, the cat was already out of the bag. In other words, the claimed invention was known, or obvious, to others a year before the application was filed. As a result, the challenged claims of Spin Master’s patents were found to be unpatentable by the Patent Trial and Appeal Board, and therefore the patents could not be asserted against Choirock (or other parties).

Spin Master’s Bakugan Patent | Source: Spin Master

Note that when inventors come up with new ideas for toys, they have to step back and explore a few key questions:

  • Is the invention “a unique product or process” that genuinely functions, or is it a mere idea — just a theory?
  • Is the invention novel or is it based on an earlier disclosure (“prior art”)?
  • Is the invention non-obvious, meaning that the development is not obvious to a person skilled in the “art” (the field of the invention) when considering either a combination of several prior art disclosures, or a single piece of prior art?

TIME, MONEY, AND A DILIGENT SEARCH

Patent applications involve hefty governmental filing and examination fees, as well as professional fees. But even before embarking upon the process of patent application, inventors should obtain a prior art search. Although a major expense in itself, a prior art search can save money and resources in the long run, because the search should reveal whether or not the invention is indeed unique and therefore patentable. Spin Master may have skipped this step, or not undertaken a sufficiently in-depth search of the prior art.

A good search will allow the inventor to correctly identify the scope of the invention, so that prosecution of the application is properly conducted, and thus helps to shorten the process and reduce costs. But, most importantly, a thorough search and professional review and opinion can help to safeguard that the invention, if patented, will survive legal invalidation challenges — such as the one brought against Spin Master.

WHAT IS “PRIOR ART”?

Prior art is any evidence that is publicly available and useful to demonstrate that an invention is already known — or would be obvious to a person skilled in that field. “Prior art” can include granted patents and published patent applications, published articles and research papers, books, videos, and even material found online. IP counsel can explain the elements of the search for your particular invention and should seek to have a search cover all the relevant elements of the invention.

RELATED: Raising the Bar: Can Toys — and Intellectual Property — Die?

Skilled counsel will formulate a search strategy based on keywords, classification, names, citations, or all of the above, and will likely investigate both patent and non-patent databases and sift through materials related to inventions similar to yours. IP counsel will then analyze the results to determine which references are the most relevant and might be combined to defeat a successful patent application.

Even the most expert and thorough search cannot guarantee that no prior art exists that would prevent a patent being issued or would be sufficient to invalidate an issued patent. But the better the search, the more secure your patent will be from legal challenges such as the one that — so far (Spin Master has appealed the PTAB decision) — has resulted in the painful invalidation of Spin Master’s patents.


This article was originally published in the May 2021 edition of the Toy Book. Click here to read the full issue!