Founding Partner
Should I Create A Prototype Before Applying For A Patent On My Invention?
By David Postolski, Esq.
Here is a helpful follow-up to our “Do’s and Dont’s of Prototyping” event from March 24th.
U.S. patent laws nor the patent office require that you create or build your invention or otherwise create a prototype before filing a patent application. However, the law requires that your invention be described to the level of detail in your patent application where one skilled in the technical area of your invention (skilled in the art) can recreate your invention without undue experimentation by reading your patent application. This is major reason why working with a patent attorney can save you a lot of time and money.
It is well known that oftentimes when developing a prototype, you will learn additional details about your invention, and you may make changes and improvements during prototyping. That’s okay. In the US you can file a patent application on your invention before prototyping. The first application (usually a provisional) will record the details known that that time. Then prototyping proceeds. If additional details or changes are discovered or made to the invention during prototyping, then your patent attorney can evaluate whether a second application (usually a second provisional, or the non-provisional application or perhaps a continuation application of the non-provisional application) should be filed on the new material discovered or invented during prototyping.
Another approach is to develop a prototype before filing a patent application. You will want to have any third parties that you work with to sign a nondisclosure agreement (NDA), because it is important that your invention be maintained as confidential so as to preserve your rights to file in the US and abroad. This decision should be made after consulting a patent attorney.
As part of Gearhart Law’s service to you, we can evaluate your invention and strategize as to what should come first – the prototype or the patent application or if possible done at the same time. The approach depends on the particular circumstances of your invention and the extent to which the important details of your invention have been developed or might be further developed during prototyping.