Many inventors wonder if they need a prototype prior to patenting an invention. The simple answer is “no’. A prototype is not required prior to filing a patent application with the U.S. Patent Office.
While prototypes can be valuable in developing your invention, they can also be costly. Considering that a licensee of your patent rights will most likely redesign your product, developing a costly prototype is not required and in some situations may actually not be feasible. If a prototype can be constructed without spending a lot of money, then prototyping your invention can be a very good first step with the invention process.
To determine if you should prototype your invention, you need to consider both the costs and benefits of prototyping your idea. If the costs are too great, then you should consider an alternative path. Below are the benefits and costs of prototyping:
i. Benefits of Prototyping
- Work out any potential design problems.
- Identify alternative solutions that may work.
- The prototype can be useful in marketing the invention to third-parties.
ii. Costs of Prototyping
- Unnecessary expense if you are only licensing your patent rights.
- Delays the invention process.
- Time and energy expended when not needed for the patent process.
There are situations when you should consider prototyping your invention prior to filing a patent application such as but not limited to:
- A prototype will cost less than $1,000 and can be developed in a short period of time;
- A prototype is needed to illustrate the basic functions of your invention; or
- Where you do not know if your product design will work.
There are also situations when you should consider not prototyping your invention prior to filing a patent application such as but not limited to:
- Where you do not intend to manufacture and the product design is simple;
- Where you do not intend to manufacture and the costs of prototype development would be expensive;
- Where you intend to only license your patent rights and the technology does not require a prototype to understand; or
- Where you have a prior public disclosure of your invention (you need to file a patent application prior to the one-year anniversary of your first public disclosure in the United States).
- Where the expense of the prototype of prevent you from pursuing your invention further.
In the end, it really comes down to time and money required to prototype your invention. Some inventors believe that prototyping an invention is a very good first step while others believe it is an unnecessary expense if you intend to license your patent rights. You will need to balance the benefits and costs of prototyping your idea prior to hiring a prototype developer.
