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Patent Pending Made Simple is a podcast for inventors who are looking to learn more about the patent process
Is a Prototype Necessary Before Filing a Patent Application?
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[00:00:00] Hello and welcome to the Patent Pending Made Simple Podcast. I'm your host Summer Shah and with me is Jamie. Jamie, how are you? Hey Summer, I'm good. Squeezing in a last swig of coffee before we chat today. How are you? I am doing well. I am glad you'll have a defense against my exceptionally calming voice here.
Oh man I got invited to this seminar thing as part of my continuing legal education, and it was about sales and lawyers. And there was this guy who was like selling this I don't know, sales training to lawyers. And just seemed disingenuous to me, you know, one of the things he was talking about was like if you're going to sell an expensive product, you need to seed that into the minds of the listener so that when you get to an expensive price point, you have don't know, intercepted that thought in some way, and I was like, man, that is [00:01:00] a a really scammy way to do this.
And then I remembered that like there was this like meta study of small businesses that have failed and like a large percentage of them, their biggest line item. Expense was hiring a business coach, some of them charge you 20, 40, 000 a year. I was like that's just a crazy industry where, you have a business that's struggling and they're spending a ton of their money into, how to get better.
Yeah, oh, that's cringy. Yeah, I guess it's like the most vulnerable population that somebody is preying on for lack of a better term. And it reminded me that the best advice that I've ever gotten You know, like in fitness and health and in business is just to do the small steps that make you better.
And if you want to lose weight, you should probably just go for a walk for 20 minutes and increase that by five minutes every week. It's very straightforward advice and you probably don't need [00:02:00] to pay someone for that. But , I guess we as human beings are attracted to the fad diets and all that stuff.
And maybe fad kind of business plans and marketing plans and all that stuff. Instead of the slow incremental, like small steps towards success is, which is what I've always been. Yeah. I think that's just, human nature, right? To want the quick fix and get to your goals right away.
But yeah. And I think, the patent process is very much like that. Some of these things that you're talking about, you have got this big goal. There are so many things you need to do to accomplish it. And yeah, you just have to take it one day at a time, one little step at a time. Yes, thanks for helping me bring this around, Jamie.
That's exactly what I was thinking about. Ha. But, yeah, and the other thing I was thinking about is our software, the Patent Pending Made Simple software, where it's I think for a lot of people, spending a ton of money, thousands of dollars on a patent application [00:03:00] may not make a ton of sense.
I think the software is a slow incremental step towards moving forward and getting a patent application done. And the podcast is also the same thing, right? Learning all these requirements and things you need to watch out for one step at a time. I really like that about what we do.
Being for, little to no cost. Hopefully our listeners are getting something out of it. I have, I agree. I hope so. I've, heard a lot of really good feedback. I think people are getting a lot out of these podcasts. So I am happy to be a part of that. Not dramatic improvement or small incremental steps towards a better patent application and a better process.
I'm happy to be a part of that. Yeah. Me too. Oh, that is good to hear. All right. Very good. So what is today's topic, Jamie? So today I think we're going to talk about something that comes up for us occasionally, and that is the question of whether you need to have a prototype before you file for a patent application.
So Summer, you want to [00:04:00] take a first stab at the answer there? This is going to be the easy one today. There is no requirement to having a prototype before you file a patent application. We get this question posed to us all the time that, Hey, I haven't actually made this thing yet, or I'm still trying to find 3d modeling company or a prototyping company.
Can I still file a patent? And the answer is almost always yes. Yes, absolutely. There is a requirement that your patent application has to describe your invention in sufficient detail that a person of ordinary skill in the art would be able to read your patent application and, basically duplicate your invention, be able to make and use your invention just from reading your patent application.
So that's the standard of how much detail needs to be in your patent application. A prototype can help with that, but, sometimes you might already have that level of detail without making a prototype. Yeah, that's right. So there are two parts of this question. One is what are, what is required from a [00:05:00] legal perspective?
Which I think you addressed here. The second part is, should you file a patent application if you haven't done a prototype from a kind of a practical perspective? So I'm sure we'll get to the practical in a second, but you're right, the 112 the enablement requirement is something that you need to think about.
You need to describe the invention in enough detail that scony art can make and use the invention. The other requirement, I think of it as a Section one on one requirement is that your invention has to be useful. And this is an esoteric topic that I've never seen come up actually, other than my law school exams which, you know For a utility patent, it has to be useful is one of the requirements.
And one of the ways that you can be not useful is if if the invention is too speculative or hypothetical, right? And the famous examples that we always talked about in law school were like time machines and perpetual motion [00:06:00] machines. Those things are considered too fantastical or hypothetical.
In those cases, you can get a patent, without even without a prototype yeah, this reminds me of, my kids come up with these things all the time.
I'm just like, I have an idea for a robot that's going to clean my room and make me food. They saw an episode of the Jetsons or something and I'm like, yeah, you can get a patent on that. It's a great idea, but you have to actually develop it. If you want to get a patent on it. Yeah, the shorthand terminology that I always use is would you have a kind of reasonable expectation of being able to make this right? So a robot that will clean your room you need to, like you said, Jamie, describe it enough detail that somebody can reasonably make it.
And if you don't have that level of detail, then you're probably not there from a patent perspective, right? Yeah. So should we move on to the practical side of things? Maybe we should talk about, when it is a good idea to get a prototype or is there anything else we should talk [00:07:00] about as far as the requirements of the patent application?
Yeah, I think we've covered it. The legal side is very clear. You don't need a prototype to get a patent application done. As long as your invention is not too hypothetical or as long as you can describe it in enough detail, you're usually good to go from a patent perspective.
So yeah, let's talk about the practical that side is a little bit more nuanced. Yeah. So I think, I think we see this frequently where somebody goes ahead and files a patent application without doing a prototype, which is totally fine. We've described the device in sufficient detail.
And we've met all the requirements of the patent application. And then while their patent application is pending, they, Go ahead and make a prototype where they start trying to manufacture it. And they discover during that process that there are some things about their product that, that need to change.
So then we have to go back and analyze the patent application and determine, whether those changes [00:08:00] are still covered, whether we might possibly need a new patent application, if the changes are if they're. Pretty big changes. The pro the prototyping process can help you work out any kinks in your invention, and a lot of times the prototyping process can make you realize there are issues with your invention that you didn't know about, or that you didn't think about before doing the prototype or help you realize that there are other ways to do certain things with your invention. There are definitely some benefits of prototyping. Do you have anything to add to that, Summer? Yeah. I think that's a good point. The additional piece is that Prototyping can sometimes be very expensive, right?
Or getting an understanding of what large scale manufacturing would look like, or even small scale manufacturing would look like all that stuff is financially very capital intensive. And getting an idea of that is helpful, right? Before you embark on this journey with your product. [00:09:00] Because if you have to outlay 30, 40, 50, 000 to get a product onto the shelves.
Then, I would like to know that before I spend a bunch of money on a patent application. So there is a bunch of financial information and a bunch of other metrics that you'll identify by going through the prototyping process. And that's helpful even before you take your first step. Yeah. The prototyping process can be expensive.
I feel like it's getting a little less expensive with, how prolific 3D printing is nowadays. That definitely helps, with certain products. But , even if you don't do a prototype, just getting, Engineering drawings sometimes is sufficient or can be helpful with working out some of those kinks in your invention.
Yeah, that's right. Yeah. We know some fantastic 3d prototyping folks who do a really good job. I think our last client who got 3d prototypes done they spent, under 200 to get it done. And it's pretty incredible. So if [00:10:00] you guys, the listeners need referrals or want to talk to 3d prototypers, we're happy to connect them to you.
Just just email us or email Jamie. Thanks, Summer. You're welcome. Let's talk about this, Jamie. What about the flip side? When do you think, or if ever, do you think it's a good idea to file a patent before you prototype? What do you think about that? Yeah, I think, a lot of our clients do that, and I, and that's totally fine to do and, I guess you need to weigh the pros and cons of filing a patent application sooner than later.
If you've had any public disclosure of your invention, you might need to file your application. Sooner than later, you might need to get that filing date soon and the prototyping process can delay, the filing of your patent application. In that case, you would probably want to file your application before you do a prototype.
And like we already mentioned, the prototyping process can be expensive, so it might be a good idea [00:11:00] to, file a patent application and then work on, finding investors or potential licensees, things like that. Do you have anything to add to that, Summer? Yeah yeah, I think that's right.
It really depends, I think this conversation about prototyping first or filing a patent first or doing any R& D or development work before filing a patent, vice versa, I think comes down to a few different factors. I think the number one is comfort level, right? So we have clients who get very nervous about proceeding with the prototyping step or the R& D step without being Patents.
And then we have other clients who feel very comfortable about it, right? So they're happy to prototype and develop and even sell their stuff without patents. And then if they hit certain metrics, then they'll come to us and want to file a patent. But I think you have to take into account your comfort level, right?
We're, human beings after all, right? Can't really make a decision in a vacuum if you're not going to feel comfortable about these [00:12:00] things. So I think that's number one, just know yourself and what makes you comfortable. The other piece of this is the cost, right? For example, like medical device companies or pharmaceutical companies they'll spend, tens of millions, 50 million, sometimes developing a product.
In those cases, they'll definitely want to file patents before they go down this road, right? Very expensive road to, to build something. But then we have other clients who build a prototype, right? Under a hundred bucks. You have to also just take into account the cost of the prototyping, right?
If you're going to spend a lot of time and resources on prototyping, it's a very complicated thing, then you may be better off filing a patent first. Before you expend a bunch of money prototyping if it's going to be relatively cheap for you to prototype, then you might as well prototype first and then file patents afterwards.
So there, there is that factor. There's probably a few more things to think about Jamie, but I think maybe those are two big ones. Yeah, I think the only other thing I would [00:13:00] add to that is it also depends on what your goals are with your patent application. Maybe it's not your intention to ever manufacture and sell that product, but rather your intention is to get a patent and find a licensee.
And in that case, you can probably avoid the expense of going through the prototyping. That's right. Yeah. Yeah. Or some of our clients will, start a kick kickstarter campaign. So you have to think about the timelines of those things and when you're going to be making a public disclosure a lot of prototyping companies will sign your non disclosure agreement, which will give you some protection, but I know we have clients who feel uncomfortable with just having An NDA level of protection, like they want an additional layer of protection, like a patent.
So the patent can help with that. But it really depends on who you're going to end up telling, right? If it's making you feel comfortable that this person who's receiving my information is reliable and trustworthy, you work with them a few [00:14:00] times. Then I think you can, push the patent.
A little further into the future, but if you're going to be disclosing it to someone, you're not really sure if it'll stay confidential or if they're overseas might be difficult to enforce your nondisclosure agreement. Generally it's just hard to enforce an NDA, right? Because once the toothpaste is out of the tube from a disclosure perspective, it's really hard to put it back in.
In those cases, the patent might be the way to go first. Yes, absolutely. Another thing to think about is having a prototype might help you with your marketing your customers being able to physically interact with your product might help with, marketing or selling your product.
So I think that's another factor to consider. I think it just comes down to, each individual and what their goals are with their product, with their invention and what their business goals are. And I think. It varies greatly from individual to individual. Yeah. [00:15:00] I'm glad you mentioned that Jamie, cause yeah, it also depends on the invention.
Cause we have a lot of clients who want to license their invention and for many of them, they don't need a prototype at all, right? Like they just need a nice cell sheet Like a picture of their invention, and it's pretty self evident how the invention is going to work. So it's not like you need to go and send your prototype to people for them to consider licensing your invention.
It's it's very self evident. There are other inventions where it's not self evident at all, right? How the invention would work, how it would all fit into a casing, for example. In those cases, having a prototype is very valuable and important part of the sales or licensing process. So yeah, it really also depends on the invention itself.
That's a good point.
Yeah. I think that about covers it Summer, unless you have anything else to add about prototypes. I think this was a lot of good information again today. Yeah, I think so. I'm glad we the legal side was clear this [00:16:00] time for a change. I'm mad about that. But yeah, no, this was great. .
Thanks. Thanks, Jamie. . Okay. Thank you, Summer. Have a good one