Do I Need a Prototype Before Starting The Patent Process?

 Some inventors mistakenly believe that they must have a prototype of their invention before they can begin the patent process. The simple answer is that you are not required to create a prototype in order to begin the patent process.  However, the patent application must contain all of the details necessary for an individual who is skilled in that particular area or field to build the invention.  In other words, the invention must be “constructively reduced to practice.”

 A prototype is an actual reduction to practice in that you have actually constructed the invention and have a working example.  The filing of a patent application is a constructive reduction to practice because you have given sufficient details about your invention to allow someone with applicable knowledge to review the details, following the instructions and construct the invention.

 For some inventions, building a prototype would be very costly and time-consuming.  An experienced patent attorney can help you determine if you should have a prototype before submitting the patent application or if the cost of a prototype would outweigh the benefits.

 Why Is It Beneficial to Have a Prototype Before Applying for a Patent?

 While it is not necessary to build a prototype prior to applying for a patent, prototypes may be beneficial to the patent process.  One advantage of having a prototype of your invention as you work through the patent application is that you may be able to identify difficulties with the planned implementation or design that need to be corrected prior to submitting your patent application.

 Catching design flaws before submitting your patent application can avoid your application being denied for failure to submit an invention that can actually be constructed and that works according to your specifications.  As you build your prototype, you identify design flaws or problems with implementation.  Your solutions and the improvements you make to overcome these issues can be included in the patent application only if they are discovered before the application is submitted.

 One last benefit of having a prototype is marketing.  If you plan to sell your patent to a third party, having a working prototype is a huge advantage when marketing your patent to potential investors or buyers.

Kelly G. Swartz is a patent attorney licensed to practice in front of the United States Patent and Trademark Office and in the state of Florida.  She limits her practice to intellectual property law including patent, trademark, copyright, and trade secrets.