Monday, July 1, 2013
Prototypes and Patents
Contrary to popular belief, you do not need a prototype to file a patent application (with a few exceptions). Instead, U.S. law only imposes a requirement that the inventor be able to explain to someone of ordinary skill in the art (i.e., the pertinent technology) how to make, use, operate, etc. the claimed invention. This law (referred to as the “enablement” requirement) also requires that this information be included in the application so as to enable others to practice the invention.
Otherwise, the Manual of Patent Examining Procedure (MPEP) expressly states that models will not be accepted unless the invention is a perpetual motion machine. In which case the MPEP requires a model. In other situations, the Patent Office can request one. This practice, of course, contrasts with what your investors might expect at some point in terms of a working model.
The exceptions to the no-model rule at the Patent Office are usually confined to unbelievable claims. For instance, if you file an application covering a warp drive, time machine, or perpetual motion machine you probably ought to expect a rejection for lack of “utility” (i.e., usefulness). A request for a working model might accompany that rejection. That is, unless, you have truly figured it out (and have explained it in the application).
Thus, if you and/or those working with you can explain your idea your idea is ready for patenting. And at this point entrepreneurs ought to assess whether their idea has commercial potential. Conversely, when an entrepreneur senses commercial potential in an idea, they ought to assess whether it is ready for patenting. They also ought to consult with an experienced Patent Attorney and/or file a provisional patent application when either condition is met.