Do you need a prototype before a patent is filed?
No, you do not need to build a working prototype before filing a patent application. However, it helps to think through all the details of what it would take to build your product. Describing your invention in writing with as much detail as possible will prove to be a valuable resource as you consider the possibility of patenting. You never know when putting your thoughts on paper might spur more brainstorming that will lead to more unique features. Experienced inventors and patent owners frequently talk about how an initial idea pivoted to another concept with greater commercial potential.
Without a prototype, what information would be sufficient for filing a utility patent application?
Even if you have not built a prototype, you should put in writing all the steps and components necessary to build your device or process. Since drafting a utility patent application will require a detailed description of preferred examples of your invention, it pays to flesh out the unique features of your concept in words and images.
Don’t worry about having fancy drawings. Your patent attorney can work with an illustrator to make professional patent drawings out of your chicken scratch hand sketches. Initially, the main purpose of your rough drawings is to help your patent attorney visualize your concept.
When does it make sense to hold off or build a prototype before a patent application is filed?
If you currently do not have enough information to build a prototype, that may be a good sign that you are not yet ready to apply for a patent. Continue developing your invention. Are there any hurdles or challenges in manufacturing process to overcome? Will it make sense to replace or omit certain components, raw materials or parts of the process that are too expensive? Building a prototype can help expose problems and lead to creative solutions that can work its way into your patent application.
Don’t forget to ask whether or not your idea is patentable. A patentability search can uncover similar patents that use the same technology or seek to solve the same problems. Just because you haven’t seen a similar product in the marketplace does not mean that your product is patentable. It’s quite common to find that others have already filed patent applications for related concepts that have not yet launched.
When does it make sense to file a patent sooner or before prototyping?
Answering this question on patent timing depends upon whether you are looking at this issue from a legal perspective or business perspective. Naturally, patent lawyers are trained (and paid) to provide legal services so an IP attorney’s answer will typically come from a legal perspective which advocates an earlier filing date. Lawyers are generally risk adverse and often expected by clients to help reduce risk. An earlier patent filing date generally lowers risk and preserves potentially greater patent rights, especially when it’s a race to the Patent Office.
From a business perspective, there may be legitimate reasons to wait. Your concept might not be a success. Perhaps there will be too many hurdles, manufacturing challenges, expenses or changes in the marketplace that will cause to quit or change gears. A decent argument can be made for establishing a proof concept before patenting.
Recognize, however, that there are tradeoffs for patent delay. Startups considering patent delay should weigh the benefits of marketplace realities and assessments against the disadvantages of a later filing date.
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