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Can You Patent an Invention Without a Prototype or Physical Example?

By John DiGiacomo

In general, it is not legally necessary to create a prototype or physical example of an invention as part of the process of receiving a utility patent from the US Patent & Trademark Office. In simple terms, a prototype is a physically-existing specimen of an invention (not just a concept in the form of a drawing or schematic). Since a prototype is not legally necessary, many inventors forgo the cost and time of creating a prototype and a patent can be issued without one.

As a practical matter, however, it may be useful and helpful to create a prototype depending on the complexity of the invention, the costs associated with creating the prototype and on whether the inventor intends to manufacture the invention. With respect to design and plant patents, almost certainly, the prototype or specimen already exists prior to the application being filed since, generally, creating the design or plant is necessary to bring the patentable item into existence.

Focusing, then, on utility patents, if the invention is complex, there are several advantages of prototyping. First, creating a physical specimen will assist in creating the artwork and drawings necessary for the patent application. Generally, the drawings will be more precise and detailed if the item can be examined by the artist. Second, the process of creating the prototype may identify design flaws that can be corrected — or alternative methods of manufacture — before the application is filed. Creating a prototype is one method of ensuring the invention works. Third, having a prototype available that shows how the invention functions can be helpful for the patent examination process.

As noted, many inventors decide to dispense with a prototype, particularly where the cost is high and the prototype will take a long time to construct. Under those circumstances, prototyping can be a serious disadvantage for obtaining a patent. For example, if a provisional patent application has been filed, an applicant has only 12 months to convert the application. If the prototype will take longer than a year to create, then, mostly, the advantages of creating it are lost for purposes of the application. Another factor to consider for both cost and timing is whether the inventor can construct the prototype. Many inventors have the “idea” but not the expertise to create the actual specimen. Finding a prototype maker can be time-consuming and costly.

Inventors will also forgo the costs of constructing a prototype if the inventor does not plan to manufacture the invention but, rather, intends to license or assign the patent. This saves the expense of prototyping. Further, many times, the cost of prototyping is an unnecessary expense because the ultimate manufacturer of the invention will re-design or alter the design. However, even under such circumstances, there are some advantages to prototyping. Primarily, having a prototype or specimen can be valuable for marketing and convincing investors to buy or invest in the invention, particularly if the invention is complex and not easily imagined from the drawings.

As can be seen, whether to create a prototype or not is a complex decision. Consulting experienced patent attorneys can help. For more information or if you have questions about applying for a patent, contact the patent lawyers at Revision Legal at 231-714-0100.

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