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Do You Need A Prototype Before A Patent Is Filed?

Home / Blog / Patent Drafting & Illustrations / Do You Need A Prototype Before A Patent Is Filed?

Introduction 

A patent is an exclusive right that provides a new technical/innovative solution to the existing solutions for solving problems. The patent applicant may or may not require a prototype creation. A patent prototype is any physical model that can tell the output of the patented product.  By making the prototype of the patent, one can make confirmation whether the patented project will be good to go for making, using, or selling or not. These prototypes give the inventor/assignee not only a hint of whether his invention will work in practice, but also helps to draft specification and claims. 

Table of Contents

Prototyping A Patent: Mandatory Or Not 

The patent prototype is helpful for the patent assignees/inventors of the patent because of various reasons but the question arises as to that is there a strict requirement for prototypes while filing patent applications.   

A prototype is not needed when one files a patent application in the U.S. patent office. It’s optional to have a prototype with a patent application.  Further US laws require that the invention must be described in the patent application in such a way that any person who is skilled in the corresponding area can re-create the corresponding invention by just reading the patent only. There are different advantages and disadvantages of making a prototype of a patent and it is the choice of inventors/assignees of the patent whether to make the patent prototype or not. 

According to Section 10(4) of the Indian patent act, every patent application must be accompanied by a patent specification. This section states every detail regarding patented invention must be included in the patent description. Depending on the product and the field of technology, one should “fully describe the invention and its operation or use and the method by which it is to be performed” without building a prototype. In crux, according to the Patent Act, it is not mandatory to have a prototype before applying for a patent. 

Prototyping A Patent: Mandatory In Some Scenarios 

However, in some scenarios, one might have to build a prototype for describing the invention in the required manner. There can be some scenarios where the patent office might request a prototype, illustrating the invention. In those cases, the prototype will only have to be provided before the patent is granted. Since there is a sufficient time window between the filing of the patent and the grant of the patent. Hence the inventor will get sufficient time after applying for a patent to create such a prototype. Hence, the inventor need not worry about creating such a prototype before applying for a patent if he can describe the invention properly. The relevant section, which is Section 10(3) of the Indian patent law corresponds to the submission of a model or sample states that: If, in any particular case, the “Controller believes that an application should be supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished before the application is found in order for grant of a patent, but such model or sample shall not be deemed to form part of the specification.” 

Advantages Of Patent Prototype 

Patent prototyping has several advantages: 

  • Make Strong Patent Application: Since the prototype is the working model of the invention, it can be used by investors for performing testing. The different users who use the demo product can give reviews and valuable inputs. Once the patent is filed before making a prototype, one might encounter issues(s) later during the production phase and it can be possible that some other inventors disclose/ claim that solution corresponding to the issue which the inventor can add in his product. By making a prototype before filing a patent, one can make more effective claims.  
  • Prevention From Later Failure: Sometimes innovative ideas appear imaginary when someone implements these ideas practically. Hence one can avoid the consequences of later failures and quickly find out the approaches that need to be focused on and that need to be avoided. 
  • Funding: By making an idea and presenting it before investors, one can get the chance of maximum funding and invite the most investors. The patent is not important unless it gives any monetary advantage to any person.  
  • Resolution Of Conflicts: By developing a functional prototype, one can visualize both the predicted and unpredicted technical challenges of a device’s design and then can apply those solutions to make an effective product/solution. By performing iterative prototyping and performing benchmarking, one can analyze different parameters. The trade-off between different parameters is compared in different iterative prototypes to obtain the final product with optimized cost and high efficiency. 
  • Technically Understand The Problem: Further, by making a prototype, one can find out and fix some of the problems in the product and find some innovative solutions to those problems.  

Disadvantages Of Patent Prototype 

Patent prototyping has several disadvantages: 

  • Risk Of Data Breach: The biggest risk of prototyping a patent is the chance of a data breach. If one is putting his efforts into building the prototype, there is a chance that another person can copy it and start making the same product and selling it in the market on a public scale.  
  • Risk Of Loss Of Patent/Invention: Further, it is also a possibility that another person can apply for the patent application corresponding to the same invention. Since according to US AIA laws, the one who files the patent first will benefit. Hence making prototypes can cause unwanted consequences.  
  • Making Process Complex: By making the prototype, one may mention every small detail in the patent application, and it is the chance that one may make a lot of key features for the invention and make it difficult to perform a patent search to get the opinion of patentability of the invention.  
  • Increase In Cost: Sometimes making a prototype causes an increase in cost that can be useful in certain stages in the patent cycle such as prior art searching, drafting of the patent application, and in the prosecution phase.  

What An Inventor Can Do If He Wants To Make A Prototype Before Filing 

The prototype is not compulsory before filing the patent application. The biggest concern while making a prototype is the chance of an invention leak, someone else starts making, using, or selling, and someone can even file before the inventor files it in the patent office. There are certain laws by which one can protect himself/herself. The first thing the inventor can do is, he can file a provisional application and get 12 months for prototyping so that he can be able to make the product and then draft and file the patent. If someone steals his invention or files a patent, the invention is still protected to get a patent. The concept of a provisional application is in many countries such as the US, India, etc. 

Conclusion

The patent prototype has advantages as well as disadvantages and one can decide which way he wants to go depending on the requirement, application area, priorities, time, money, level of competition, and jurisdiction where he wants to file a patent. Further, there is the chance that the inventor first files the patent and then makes a product without making a prototype. In that case, he must make changes to the product after considering different parameters, consumer/industry reviews, cost, and other factors.  

It is possible that changes one wants to make in the product are not present in the patent application/granted patent. To overcome such challenges, one can later file another application taking priority over the main application. That application can be a continuation in part in the US, a patent of addition in India, etc. Although the patent prototype is non-mandatory before filing a patent, it is the decision of the inventor/assignee whether one wants to make a prototype or not.  

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