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Patent filing

Do you need a prototype before filing a patent?

There has always been confusion over the need for a prototype for a patented invention. Fortunately, you don’t need one. However, it’s essential to know that prototypes are critical if you – as an inventor – are looking to achieve the proof of concept. 

Ideally, if you are to build a prototype, it is after filing a patent application. If you are developing one, then seek feedback from third-party individuals who will give you unbiased advice that will help you better your product. Do note that the individuals giving feedback should not be family or friends. 

Advantages of patenting without a prototype 

There are several advantages of patenting without a prototype. These include the following

  • Reducing the risk of early publicizing or disclosing: If you focus your efforts on building a prototype, it will cost money and run the risk of giving someone else access to your invention, and publishing it. So if you don’t prototype your product, you limit the risks associated with early disclosure
  • Doesn’t leave a hole in your wallet: By not putting in money and time into your prototype, you’re going to save money and focus on just getting the legal protection you need
  • The patent process is faster: Do your research first before you file a patent. This way, you’re going to save money and instead focus it on just getting the legal protection you need, first.
  •  Reduce Design Deviation During Patent Prosecution: If you are building a prototype or are actually selling your invention while the patent is pending, there are some downsides because you will inevitably be changing your design based on customer feedback and manufacturers, etc.

Every patent application has to be accompanied by a patent specification. The patent specification should explain your invention in sufficient detail so as to enable one having ordinary skill in the field of the invention, to practice your invention. Section 10(4) of the Indian patent act states what has to be included in the patent specification. A part of the aforementioned section is provided below:  

(4)Every complete specification shall—   

  • Fully and particularly describe the invention and its operation or use and the method by which it is to be performed;
  • Disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; 

It shall be noted that, depending on the product and the field of technology, one may be able to “fully and particularly describe the invention and its operation or use and the method by which it is to be performed” without actually building a prototype. Do note that in some cases, you will be required to build a prototype to describe the invention in the required manner. In essence,   it is not mandatory, according to the Patent Act, to have a working prototype before apply for a patent

Sometimes, the patent office may request for a sample that illustrates the invention. In this case, the applicant will have sufficient time after applying for a patent to create such a model or sample. Hence, the patent applicant need not worry about developing the model if s\he can describe it properly. The relevant section, which is Section 10(3) that corresponds to submission of model or sample, is reproduced below: 

10(3) If, in any particular case, the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished before the application is found in order for grant of a patent, but such model or sample shall not be deemed to form part of the specification.

It shall be noted that making a prototype is not only a time-consuming process but also fairly expensive. If an inventor refrains from applying for a patent till the prototype is prepared, it may delay his patent filing process and in turn the priority date. In the meantime, if someone files for a patent for the same product, they will have earlier priority, and their invention will act as prior art for your invention, even though others might have invented the product after you did. 

In such scenarios, he will be eligible for a patent grant, as in many countries of the world, including India, the patent system follows a ‘first to file’ and not ‘first to invent concept. Hence, if the inventor feels that he has sufficient details about the invention to enable a person with ordinary skill in the field to practice the invention, even before building the prototype, he should ideally consider filing a patent application.

 

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