Which Comes First - The Patent or the Prototype?

All through my time helping inventors create a multitude of numerous projects, this conundrum has normally reared its head. It is crucial to say from the outset that there is no definitive answer, but I will aim to convey the alternative perspectives, to permit inventors to make an informed option for themselves. The opinions on this topic differ across experts in the IP industry and the answer will differ based on the specific idea.

Getting said that, beneath are the major factors for developing a prototype before patenting:

1. A patent application calls for a particular level of detail regarding how the idea functions. This is identified as 'sufficiency' or an 'enabling disclosure'. It is normally much easier to describe, and draw, an invention when a prototype has been made and tested.
2. Prototyping develops the idea and it may possibly be that a new or far better resolution is achieved. Potentially these iterative developments could need altering the original patent application or filing a new application. This could expense a lot more or result in advantageous adjustments becoming left unprotected.
3. The grace period prior to substantial fees and necessary decisions require to be produced during the patenting approach is very brief, considering the typical time it takes to launch a new item onto the market. It could be argued that it is far better to progress the thought as significantly as attainable prior to filing the patent application, including finalising the design via prototyping. This would then enable the grace period to be made use of for manufacturing or licensing the item.
4. A prototype can be applied to test the marketplace and some people today think about that it is very best to do this ahead of embarking on a potentially highly-priced patenting method. (Disclosing the notion can prevent a granted patent being achieved and legal guidance should be taken on how to test the industry with no forfeiting potential patenting opportunities. Confidentiality agreements are one way of protecting an thought just before a patent application has been filed.)
5. A prototype may well prove that the idea is not viable therefore saving the expense and time involved in drafting and filing a patent application.

Conversely, beneath are the primary reasons to file a patent application prior to prototyping:

1. Prototypes normally have to have to be created by suppliers and for that reason it could be wise to file for the patent 1st to shield the intellectual property.
2. If the inventor waits for the prototype to be created prior to filing the patent application, somebody else may perhaps file an application for the same idea first. In countless nations of the world, which includes the UK, the patents systems are 'first to file' and not 'first to invent'.
3. The patent application approach contains a thorough worldwide novelty and inventiveness search by the UK IPO that could reveal useful prior art material, not only in terms of the direction the prototype should take, but also in terms of prospective infringement issues whereby the prototype can then be designed around existing patents.
4. A patent application and the resulting patent, like all intellectual property, offers an asset which is owned by the inventor or applicant corporation. If prepared efficiently, the patent can be licensed or sold to produce an income stream potentially without ever needing to create the prototype.
5. It could be better to commence with a patent application if funds are limited, as a patent application is normally more affordable than a prototype.
6. A 'provisional' patent application can be filed without having requiring great detail, supplying a follow up application is then filed inside 12 months which describes the concept in much more detail. This may well be following the proof of concept provided by the prototype.

There are some methods round these concerns. Prototyping producers can be asked to sign a confidentiality agreement prior to the concept is disclosed. Nevertheless bear in thoughts that various corporations will not sign confidentiality agreements, considering that their in-house departments may well be working on similar tips. Pre-application patent searches can be carried out prior to prototyping or patenting to discover regardless of whether it is sensible to proceed without having having to draft and file an application.

There is a third perspective for consideration. Some market professionals would recommend that it's not a patent or prototype that should really come initially but the opinion of industry experts as to whether the idea is viable and will sell. They would argue that the prototype and patent are essential parts of the procedure but, at the fairly starting, it is top to ascertain that there is really a industry prior to investing in either a patent or prototype.

In conclusion, the most effective way to proceed with any new item idea is a complicated decision. If the novel functionality of the notion is unproven, then a prototype may well be a sensible initial step. It is worth ensuring that a reputable firm is used to create the prototype and that a confidentiality agreement is signed prior to the concept getting revealed. Alternatively, the inventor might opt for to file a patent application 1st and accept that further expense may be incurred to re-file or amend the application as the project is created.