Prototypes are not necessary when starting your patent protection strategy. Instead, all you need is a fully detailed written specification with drawings to achieve patent-pending status. This is typically accomplished by filing a provisional patent application.
A better way to phrase this question is, “Can I patent an invention without creating a prototype?” To understand the difference between an idea and an invention, read our article on how to patent an idea.
In this article, we will explore the pros and cons of patenting an invention without a prototype. But before we dive in, it’s important to note that prototypes can be crucial for investors who need proof of concept. Depending on your expertise in the subject matter, you may or may not need to develop a basic prototype to confirm that your invention works as intended.
For example, if you’re a plumber who comes up with an innovative faucet design to prevent leaks and fatigue damage, you could simply sketch and describe it to obtain the necessary protection. However, if you venture into a completely new field, such as inventing an airplane wing with a ducted fan combination for a rotorcraft, it’s advisable to prototype your invention to achieve a proof of concept.
Building a prototype becomes particularly beneficial after filing your patent application, usually following a provisional patent application. The purpose of the prototype is to test your invention thoroughly. Seek unbiased feedback from third parties, avoiding family or friends, to gain valuable insights. Incorporate any improvements or enhancements into the non-provisional patent filing, which must be done within a year.
If you have questions about filing a provisional or non-provisional patent application or need feedback on your invention, book a free consultation with Garrity Traina today!
Now, let’s examine the pros and cons of patenting without a prototype.
4 Pros to Patenting Without a Prototype
Reduce Risks of Early Publication or Disclosure
By focusing on patent protection before investing in expensive prototypes, you minimize the risk of someone else gaining access to your invention or publishing it prematurely. Publicly using, selling, offering to sell, or publishing your invention triggers a limited one-year window to file a patent application. Violating this statutory bar can invalidate your patent claims if discovered later.
Additionally, relying on shared spaces or workshops for machining, building, and assembling your invention poses the risk of unauthorized access by third parties without proper confidentiality. If someone were to see your invention, they might fraudulently file it as their own. Though a Derivation proceeding can be pursued, it involves costly and time-consuming litigation.
By avoiding prototypes and disclosing your invention only after filing a patent application, you eliminate the risks associated with early exposure. Once the application is filed, you may share its contents with third parties, but ensure confidentiality by using a confidentiality agreement.
Lower Upfront Expenses
By not investing time, money, and effort into prototyping upfront, you can save costs and focus on obtaining the necessary legal protection. Prototyping expenses vary depending on complexity and materials, ranging from under $100 for a simple mechanical invention to over $10,000 for more complex machines or software. Instead of spending on prototyping, channel your resources into preparing and filing a strong patent application.
Move Faster through the Patent Process
Multitasking is known to reduce efficiency, and the same applies to patenting. Focusing on developing your invention and conducting thorough research before filing a patent accelerates the initial part of the process. By providing your patent attorney with a comprehensive invention disclosure, they can perform the best patent search possible.
Juggling product development, prototyping, and testing simultaneously can lead to time constraints, potentially compromising the details necessary for a successful patent search. A well-written and comprehensive patent application reduces the need for modifications or edits during prosecution.
While the pace of the USPTO examination process cannot be expedited unless through Track 1 expedited processing, submitting a detailed application ensures smoother prosecution.
Reduce Design Deviation During Patent Prosecution
Building a prototype or selling your invention while the patent application is pending has downsides, as design changes based on customer feedback and manufacturing may occur. Although this can be beneficial, as it allows for improvements, it also increases “design churn” and deviation during patent prosecution.
Monitoring the alignment between the product being sold and the granted patent claims becomes crucial. Over time, subtle changes may render the product outside the scope of the patent’s claims.
4 Cons to Patenting Without a Prototype
Proof of Concept Incomplete
Differentiating between a proof of concept and a prototype is essential. A proof of concept serves to confirm or disprove assumptions made during the invention’s development. It often takes the form of a drawing, sketch, or a key component of the invention, demonstrating its functionality, albeit not as a fully working model.
A prototype, on the other hand, is a full-scale, working model that includes the core innovation as well as related structures, traditional materials, and state-of-the-art materials. It can also be described as a market-ready design.
Proof of concepts are more functional in nature, providing validation for the inventor’s assumptions. Failing to develop a working prototype may leave some aspects unproven. It is advisable to develop a prototype that confirms the uniqueness and potential of your invention before seeking legal advice.
Manufacturability Can Inform Patent Application
Moving forward with the patenting process without developing a complete prototype means not considering the manufacturing aspect of your product. Manufacturing challenges may arise later, leading to changes in embodiments or versions of the invention.
To ensure comprehensive coverage in the patent application, these potential variations should be discussed. Although patent attorneys help inventors consider manufacturing aspects, unforeseen challenges may emerge during prototyping and modification for cost-effective production. Factors such as moldings, hinges, fasteners, material types, shapes, proportions, tolerances, packaging, and integration with other products should be taken into account to strengthen the patent claims and avoid infringing on other patents.
No Customer/Industry Feedback during the Patent Process
Lack of prototyping or a market-ready product during the patent process deprives inventors of valuable feedback from potential customers or testers. This feedback is essential for iterating and improving the invention, transforming it from innovative to high-demand.
Not having this feedback during the patent process limits the focus to theoretical embodiments and versions instead of real-world products. Market trends guide inventors regarding the most impressive features for customers. Such insights can also be used as arguments against USPTO examiner rejections based on obviousness.
To receive feedback on your invention, book a free consultation with Garrity Traina today!
Lose Insight on Improvements/Iterations
Prototyping and launching the product during the patent process provide inventors with a better understanding of competitive pressures. This insight can lead to further innovations within the same patent family or the creation of brand-new inventions. Continuous improvement is vital for many inventors and companies to stay ahead. By skipping the prototyping stage, the opportunity to enhance the product is lost.
In conclusion, when considering whether to prototype during the patent process, many factors should be taken into account. Variables such as the nature of the invention, market behavior, competition, financial constraints, and statutory bars influence the decision.
To receive precise answers tailored to your invention, schedule a free consultation with Garrity Traina now!
Please note that this article is not legal advice, and reading it does not form an attorney-client relationship. For confidential legal discussions regarding your invention, contact us at Garrity Traina.
