Throughout my time helping What Is A Patent develop a multitude of different projects, this conundrum has often reared its head. It is important to say from the outset that there is no definitive answer, however i will try to convey the alternative perspectives, to allow inventors to make an informed choice for themselves. The opinions on this topic vary across professionals in the IP industry and also the answer will differ depending on the specific idea.
Having said that, below are the main reasons for developing a prototype before patenting:
A patent application needs a certain degree of detail regarding just how the idea functions. This is referred to as ‘sufficiency’ or an ‘enabling disclosure’. It is often simpler to describe, and draw, an invention after a prototype has been created and tested.
Prototyping develops the concept and it might be that a new or better solution is achieved. Potentially these iterative developments could require altering the initial patent application or filing a whole new application. This could will cost more or result in advantageous changes being left unprotected.
The grace period before substantial fees and important decisions need to be made during the patenting process is quite short, considering the average time that it takes to produce a brand new product onto the market. It can be argued that it must be preferable to progress the idea as far as possible before filing the patent application, including finalising the design and style through prototyping. This could then enable the grace period to be used for manufacturing or licensing the merchandise.
A prototype could be used to test the current market plus some people take into account that it is best to do this before starting your potentially expensive How To Patent A Product strategy. (Disclosing the concept can prevent a granted patent being achieved and legal counsel ought to be taken regarding how to test the marketplace without forfeiting potential patenting opportunities. Confidentiality agreements are just one way of protecting an understanding before a patent application continues to be filed.)
A prototype may prove that the idea is not really viable therefore saving the price and time associated with drafting and filing a patent application.
Conversely, here are the key top reasons to file a patent application before prototyping:
Prototypes often must be produced by companies and thus it can be smart to file for the patent first to protect the intellectual property.
If the inventor waits for the prototype to get produced before filing the patent application, someone else may file a software for the similar idea first. In many countries around the world, such as the UK, the patents systems are ‘first to file’ rather than ‘first to invent’.
The patent application process includes a thorough worldwide novelty and inventiveness search by the UK IPO that could reveal valuable prior art material, not just regarding the direction the prototype should take, but in addition in terms of potential infringement issues whereby the prototype are able to be designed around existing patents.
A patent application and also the resulting patent, like several intellectual property, gives an asset which is owned by the inventor or applicant company. If prepared effectively, the patent could be licensed or sold to generate an income stream potentially without ever having to make the prototype.
It may be better to begin with a patent application if funds are limited, as a patent application is usually less than a prototype.
A ‘provisional’ patent application can be filed without requiring great detail, providing a follow-up application will then be filed within twelve months which describes the idea in more detail. This may be pursuing the proof of concept provided by the prototype.
There are some ways round these issues. Prototyping manufacturers can be asked to sign a confidentiality agreement before the idea is disclosed. However bear in mind that many companies will never sign confidentiality agreements, since their in-house departments might be focusing on similar ideas. Pre-application patent searches may be completed before prototyping or patenting to discover whether it is sensible to proceed without needing to draft and file an application.
You will find a third perspective for consideration. Some industry experts would claim that it’s not really a patent or prototype that should come first nevertheless the opinion of skilled professionals as to if the concept is viable and will sell. They would debate that the prototype and patent are essential areas of this process but, on the start, it’s best to ascertain there is actually a market before investing in either a patent or prototype.
In summary, the simplest way to proceed with any cool product idea is A New Invention. In the event the novel functionality of the idea is unproven, then a prototype may be a sensible first step. It really is worth making certain a fbmsjf clients are employed to produce the prototype which a confidentiality agreement is signed prior to the concept being revealed. Alternatively, the inventor might want to file a patent application first and accept that additional cost might be incurred to re-file or amend the application because the project is developed.