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Patent Pending Made Simple is a podcast for inventors who are looking to learn more about the patent process
Hello and welcome to the Patent Pending Made Simple podcast. I'm your host Summer Shaw, and with me is Jamie Brophy. Jamie, how are you? Hey, summer. I am good. I'm excited to be recording today. We have a fun topic, so yeah, I'm doing good. How are you doing? I am doing all right. Yeah, we have a. Really complicated topic.
I don't know if we're gonna get through all the nuances of it today. What do you think? Oh, I think we can, okay, so today's topic is, do I need a prototype before I file a patent application? And I get this, we get this question a lot. Um, inventors who have come up with an idea, we'll call our office and they'll say, well, you know.
I haven't prototyped it or anything yet, but I do wanna protect it before I disclose it to the world. So Jamie, what would you say to those inventors? Maybe the folks who are listening? Do you need a prototype before you file your patent application? Yeah, we do get this quite often, and the short answer is no.
You don't need a prototype before filing. It's not a requirement. But you do have to have a pretty good idea of how your invention is going to be made and used. The idea of a patent application is that the patent or the invention has to be sufficiently enabled, so described sufficiently enough within the document that a person, a hypothetical.
Person of ordinary skill in that field would be able to read your application and just from reading what's described in your application, be able to recreate your invention, you know, be able to make it and use it just from reading through the description. So, you know, as we've discussed before, you can't patent an idea.
You have to have a pretty good idea of how it's gonna be made and how it's gonna be used. But you can do that with drawings. You don't have to have a prototype. So yeah, that's kind of the short answer. Yeah, that's a good answer, Jamie. I think this is a very straightforward answer at a surface level, but I think it's intersects a bunch of different areas of patent law where.
It can. I think that's probably why people are asking us this question and why people are confused about it. The enablement requirement, like you said, is a big one. The other one is the section 1 0 1, right? The patent eligibility question, which is kind of a threshold question, right? Like. Is this patentable subject matter, and our laws on this are pretty opaque in, in fact, probably the most complicated area of patent law is section 1 0 1, whether something is patent eligible.
And one of the things that is not patent eligible are ideas. The other things that are not patent eligible. At least this is what I remember from my law school class, so bear with me. But like time machines and perpetual motion machines are like famously things that are not patentable because like they defy the laws of physics, right?
Like that that is not patent eligible subject matter as far as we know. So that's not patentable. So like if I come up with an idea, at what point does it cross over from being an idea which is not patent eligible to being patent eligible and then being enabled, right? Like to enable somebody else to make this idea like where is that line?
That's hard to, hard to say. Right? Yeah. Yeah, I would agree with that. And you know, I think kind of the way to think about this is, oh, I have this great idea for this invention. This is the problem it's gonna solve. Okay, now how specifically do I make this invention? Or how specifically do I solve this problem?
You kind of have to dig into that a little bit. You know, just having an idea for solving a problem is not enough. You have to have a pretty good idea for how specifically your invention is gonna solve that. Yeah, I think that's a great way to put it. To give our listeners an example, if I have an idea for cleaning a swimming pool, right, like I have an idea that will make it easy or automatic to clean a swimming pool.
That's an idea, right? That's not patent eligible. But if you're like, okay, I have an idea for how to clean a swimming pool, which is like using a robotic vacuum system that is attached to a filtration unit, something like that. Like, then you're getting closer to patent eligible subject matter. Yeah. Yeah. I think that's, that's a great example.
And a lot of times when you are thinking through how to solve these problems, your invention ends up being a little different than what you initially thought it was gonna be. So, and those changes are definitely things that you would wanna put in a patent application. Mm-hmm. Right. The changes are not a bad thing, right?
I mean, that is like ideas get, you know, they evolve and they get refined over time, and I think that's actually a good thing, right? That means that you're making progress on the idea from being something unpolished to being something that can come to market. So I don't think you should be afraid of that happening.
In fact, you should continue to iterate and evolve on the idea. If you're an inventor. I think the flip side of this is, let's say I have figured out a way to clean a swimming pool, but I want to stop other people from not just using my system to clean their pool, but like similar systems from cleaning the pool.
How would you advise folks that you know? I think that's probably why people are motivated to try to protect an idea. 'cause they wanna stop other people from broadly doing what they have invented or what they've come up with. How do you handle that, Jamie, in a patent application? Yeah. I think the way to handle that varies broadly depending on what, how crowded that field is.
You know, if there's a lot of swimming pool cleaning devices that are similar, then you might have to be really specific about the advantages. Of your swimming pool cleaning device, and that makes it so special. And so it might have to be very specific. You know, on the other hand, if there are not very many swimming pool cleaning devices, you can be a little broader.
So it depends on how crowded that field is. In general, you wanna think about other alternative ways that things can be done or alternative ways of doing certain things in your invention, and the more alternatives you can think of, the broader you can make your patent application. So, but yeah, I think in general it just depends on how crowded that field is.
What do you think Summer? Yeah, that's right. I always think of it as a sliding scale, right? The more crowded UN field is. So if there are a hundred different ways to clean a swimming pool, you are. Invention has to be very like more novel or differentiated from what already exists. But if let's say there are no mechanisms that people know of to clean a swimming pool, then you can.
Get a patent on a broader methodology or a system. So yeah, I think a sliding scale is how I think about this, depending on how crowded the field is in terms of how much of that field can you capture with your patent application. But this is tough, and I think we've done it again. We've made a simple, simple answer, right?
Very complicated. And I had this actually happen yesterday with a fairly sophisticated client, experienced clients, and they. We were in a call together and they wanted to, I kept asking them like, Hey, what is like novel or what is something specific that you have implemented into your system? And they refused to answer that question.
They were just like, well, we wanna protect the idea broadly, right? Like the, like what we're doing is something very different, and there's probably a hundred different ways somebody could do this. So we wanna protect the idea and didn't give me details. Which I get, and this happens to us all the time, Jamie, and it's paradoxical in a way, right?
So like if you want to protect the concept, the broad concept, I think the inventors are like, okay, let's give our attorneys the broad concept so they can only write up the broad concept, right? And then we'll have a really broad patent, but. In my opinion that the opposite is true, right? So I always think about choke points, right?
Like what is the one or two universal thing that every one of your competitors is gonna have to do to create a competitive product? Let's file a patent on that right now. That's a very specific patent and it's on a very narrow subset of what your product actually does. But paradoxically, it's a more valuable patent because you have said that, okay, everyone needs to kind of funnel through this one step to create.
Uh, competitor products and we have a patent on that now. Everybody's gonna have to pay us a licensing fee or license our patent or technology in some way and go through us to get to market. So it is attractive to wanna put down broad ideas and general concepts as a way to kind of occupy the whole space.
But I think the opposite is true. Like if you really wanna occupy the space, then you should do the work of identifying a choke point and building your IP around that. Yeah, definitely. I also like to think about it as like, okay, what is the one or two, you kind of talked about this already summer, but kind of in different, with different wording, but what are the one or two features that your invention absolutely has to have?
And then was everything else. Optional or can it be done in other ways? I kind of like to think about it like that. You know, the other danger with just disclosing a broad, general concept is if you're not able to get a patent on it, that patent application becomes public, becomes public record, it's gonna get published, and then other people are gonna be able to see that general concept and kind of.
Go from there, and they might come up with an invention that's kind of similar to what you originally wanted to get a patent on. So there's a danger with that as well. I think you at least need to have some examples for how that general concept can be accomplished. Yeah. The other danger of that general concept, patent application, I've had this happen with a client where they used another attorney and they put down some very broad patent applications, very conceptual in nature.
Not really specific to an implementation detail. And that company, they've been, you know, they've been around, they've been, you know, making money. And then two or three years later they have come up with some really neat features, right, that they can add to their product. And they're like, oh yeah, these are gonna be game changers.
But when they filed the application on those features, the newly developed features, their own patent application got cited against them. 'cause they had disclosed like a broad version of it. And that broad version was so broad that. It was not patent eligible, so they were not gonna get a patent on it with the first application that they filed.
But now the first application is blocking their second application, which is patentable from getting it. So, like you could do more harm than good by going broad and conceptual because one, it's not patent eligible, and two, it may, you know, prevent you from getting a patent on future developments that you make down the road.
Yeah, that is a tough situation. So Summer, maybe we should talk about like what are some of the pros and some of the cons of coming up with a prototype before your patent application. What do you think? Yeah, thanks for reigning us back in. We were getting a little off target, so I wanted to kind, you know, land the plane and get back on our subject matter.
That's right. I get on my soapbox from time to time.
Yes, let's do it. I think this is a great way to stay on track. Finally, some pros and some cons. Let's see. Do you want me to start or do you want to, do you wanna take the first one? No, you go ahead. Okay. So what are some pros of filing a patent first before you do a prototype? Is that right Jamie? Yeah, well, I think the pro there is fairly obvious, right?
So in order to build a prototype, you are going to have to interact with the universe in some way, right? Whether it is 3D design, whether it's molding, whether it's 3D printing, most of our listeners or inventors are not experts in these things, so they're going to have to get. Outside consultants or experts to help them with these things, and there's always the risk that these people learn about your idea and they try to patent it first, or they do something nefarious with the idea and try to cut you out.
Right? That's always. Risk. So having a patent on that idea before you prototype will prevent that at least nominally or create some deterrence, right. Prevent other people from who might be otherwise inclined to take your idea and run with it. It would give them some pause. Yes, absolutely. Yeah. I think it's generally a good practice to have some kind of patent protection in place before you disclose your idea to anybody else.
Even if it is under an NDA, you know, it's a good idea to have some kind of, you know, at least a provisional patent application in place first. I agree. Jamie, are there any other pros to filing a patent first? Um, no. I will say, oh, the, the other pro is that talking to an attorney is sometimes helpful because what you may have is just an idea, right?
And you may have like big plans for this idea that like, oh, I'm gonna get a prototype and then I'm gonna, you know, like I, I'm gonna patent it and then I'm gonna take over the world. Times an attorney will be able to tell you that, hey, this is not really patent eligible. Subject matter. For example, like, I'm trying to think of an example, but let's say you came up with a new way to foreclose, right?
Like that may not be patent eligible. So like knowing that at the outset. Could save you a lot of trouble. We're gonna talk about this in one of our future episodes, Jamie, but somebody invented and patented the stuff Crust pizza, right? Like knowing in advance that it's not really patent eligible might save you some time and heartache down the road.
Getting some additional context from your IP practitioner may be helpful to you down the road before you start prototyping. Yeah. Yeah, definitely. So when you say not patent eligible, you mean like it's probably not patentable in view of the prior art or under 1 0 1, it's not patent eligible. I guess both.
I was thinking more about the 1 0 1 question, but yeah, it could be both, right? Yeah. Uh. 'cause if your practitioner does a search and finds out that somebody's already done it. Then you've saved yourself a bunch of time and effort and money in the prototyping process because that's not a viable idea.
Yeah, and I think it happens frequently that a client comes to us with more of a general idea. You know, they have some maybe specific ideas for how they're gonna do it, but it's just kind of in the development phase still. And we kind of tell them, I think this is probably gonna be very difficult to patent until you solve this one specific problem in a specific way.
Piece of it might be, might make it patentable, but just the general idea is probably gonna be really difficult to patent. So if you consult a patent practitioner, they can probably ask you those questions and kind of get you thinking about some things that you need to, you would need to include in your patent application and some questions that.
You probably need to answer before you file a patent application. Yeah, I agree. We have this happen to us from time to time where the client comes to us with an idea, we do a search, and we're like, Hey, somebody's already done a version of this. And sometimes, I mean, it's always discouraging to get that news right.
But oftentimes I think our clients will go back and they'll refine their idea. They'll sharpen their knives, so to speak, or sharpen their pencils. Is that the expression? I dunno. And come back to us and they, they'll say, well, now I have this. That I think is an improvement over this other thing that you found.
And. I would say like a hundred times out of a hundred, that's like a much more marketable and a better idea than what they started out with. 'cause what they've started out with might've been too general to be successful in the marketplace or not differentiated enough. So getting that early feedback and resistance from an IP practitioner is sometimes helpful before you spend a bunch of money.
In the prototyping stage, which really isn't focused yet, right? Because prototyping, you don't run into a lot of resistance at that point. You're spending money without getting that feedback from the world at large. Yeah, absolutely. So now maybe we should talk about some pros of developing your prototype before you file your patent application.
What do you think? Yeah, I think there are some pros to doing that as well. Oftentimes during the prototyping stage, you will find some difficulty that you. Encounter or run into and you will say, oh, like this nobody has done before. Or like, this is really hard and that's why this product doesn't exist.
Then you have figured out a way to, or you have figured out what is truly novel and differentiated about your product and it gives you patent attorney something to work with when they start writing your patent application. When we write our patents, Jamie, we always think of this, we call it a point of novelty, right?
Like what is one thing that is in your invention that's not in any of the prior art? We build a patent around that. So having that kind of figured out before you file a patent application is helpful because it allows you to be a lot more focused in your patent application. Yes, absolutely. I think that's a great way to put it.
You know, during that product development, when you're making your prototype, you're figuring out specifically how to solve some of those problems and yeah, that information is helpful for your patent application. Yep. I agree. The other thing, this we don't talk about enough, but. When we interviewed Steven Key, he talked about it, which is like the method of manufacturing, right?
Like, uh, oftentimes we don't spend a lot of time on it because a lot of products are manufactured in a pretty typical way, right? In kind of existing, using existing practices. But you may uncover something there that will really help and strengthen your patent. 'cause it's sometimes easy to invalidate.
Patents on a feature basis, but a method of manufacturing patent. If you figured out a new way to build something or connect something, that may be a much more difficult patent to invalidate down the road. So there's some value there as well. Yes, absolutely. That is a great point. We have a client that we're working with right now where they had to make some changes to the machinery that makes their product, and the patentability might actually lie in the changes they made to that machinery.
Not necessarily their product that they ended up with. So yeah, that is a great point. Yeah. And we talk about this plantee on this show, I think, but we think the provisional is a great, great kind of a tiebreaker, right? Like there are pros and cons. On both sides of the equation here. I think a provisional is a great way to hedge your bets and say, Hey, I'm gonna get something patent pending.
I'm gonna get some protection around it. And then as I go through the manufacturing and the prototyping and the licensing process, as I gather more information, I can stick all that information in non-provisional. To me, it's kind of the best of both worlds. Yeah. That's what. I was gonna say as well, like that's kind of the path that I recommend.
File your provisional application. We've talked about this several times before on here, but get your provisional application filed and then work on your prototyping and your product development. Inevitably, things are gonna change during that time, so you'll have the non-provisional to add those changes that occur during the product development phase.
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