Do I Need a Prototype to File a Patent Application?

Do I Need a Prototype to File a Patent Application?

A common question that arises during an initial consultation, especially with start-ups and individual inventors is whether or not a prototype of their proposed invention needs to exist before they are able to submit a patent application.  The simple answer is that an inventor does not need to have a prototype built in order to move forward with a patent application.

To submit a patent application, the description of the invention must satisfy the “enablement” requirement; in other words the standard is whether one of ordinary skill in the field would be able to pick up your patent application and actually practice (i.e. make and use) the invention.  An inventor may satisfy the enablement requirement with or without a prototype depending on if the inventor is able to describe fully in writing with associated drawings how to make and use the invention.  This description should include the novel aspects of the invention, including improvements over the existing technology in the field, how all of the elements of the invention interrelate and work together.

Some inventors based on their technical background will be able to prepare an initial disclosure document satisfying the “enablement” requirement without the need for a prototype.  However, other inventors may need to create a crude prototype of their proposed invention if they do not have the requisite background to properly describe the invention.  Depending on the complexity of the invention and the technical field of the invention (mechanical vs. electrical), inventors may need to enlist the services of a professional engineer or lab in order to produce a working prototype.  The creation of a prototype not only will assist the inventor in figuring out how the invention will actually work to prepare an initial disclosure document, but it will also determine whether the proposed invention is able to function as conceived.

In summary, although a prototype is not required to submit an application, there are several advantages to eventually creating one, namely you will be able to ascertain whether your original design on paper actually translates into a working invention.  Even if your invention works, it may not work as well as you want, thus requiring you to modify the original design.  As such, your original patent application will only cover your original design, which will not cover the commercial embodiment of your invention which will be available for sale to the public.  By determining and identifying any design flaws, you may be able to submit a second patent application building off of your first application and incorporating the latest version of your invention.

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