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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 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 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 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 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 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 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 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 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
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.
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 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 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 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 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 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.
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 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