Do I Need to Have an Invention Ready Before Filing for a Patent?

Do you need to have a fully-developed invention before filing for patent protection? The answer is no. You don't need to actually manufacture or implement your invention before applying for patent protection. Many valuable inventions are protected by patents even before the first functional prototype is built. However, depending on your invention and the circumstances of your case, it may be beneficial to develop a prototype before filing a patent application. Patent laws don't require you to create or build your invention or create a prototype before filing a patent application.

However, the law requires that your invention be described with the level of detail in your patent application, so that an expert in the technical area of your invention (skilled in the art) can recreate your invention without undue experimentation by reading your patent application. We prefer to err in favor of more disclosure of details related to the invention rather than less when writing a patent application. Therefore, if you have a general idea about how your invention would work, but you cannot describe how an important component of your invention would interact with another important component of your invention, you may need to design or create additional prototypes of your invention before applying for a patent. On the other hand, if you know, for example, that your device needs a motor to operate certain components and you know how those components would interact with the engine, you may not need to know all the internal details of the motor to proceed with a patent. It is well known that often, when developing a prototype, you will learn additional details about your invention and be able to make changes and improvements during prototyping. There are at least two ways to approach the possibility that prototyping will result in new details about your invention. The first is the most protective procedure.

The first approach is to file a patent application for the invention before creating a prototype. The first application will record the details known at that time. If changes are discovered or made to the invention during prototyping, your patent attorney can evaluate whether a second application should be filed on the new material discovered or invented during prototyping. In addition, you can decide from a business perspective if the new details are sufficient to justify the cost of a second request. The second approach is to develop a prototype before filing a patent application.

You'll want the third parties you work with to develop a prototype to sign a confidentiality agreement (NDA), because it's important that your invention be kept confidential before filing the patent. Once prototyping is complete, when a patent application can be prepared, including new details discovered during prototyping. There are some details that could be discovered during prototyping and that would not justify a new patent application. These details depend on your particular circumstances and your invention. For example, if during prototyping you discover that the total length of your invention should be longer than previously anticipated.

That discovery may not justify a new request. In general, the expansion or reduction of a component that would otherwise be scalable and that produces the expected results from such a scale does not substantially affect the patentability of an invention or a feature. The exception to this rule is when scaling was achieved when such scaling was not previously possible or was not thought possible in the relevant technique. Your patent attorney can let you know if any changes or inventions that occurred during prototyping are likely to justify their inclusion in a second patent. We often evaluate inventions to determine (if more engineering is recommended) before patenting them or (if it is recommended to file a patent application first). The approach depends on the particular circumstances of your invention and the extent to which the important details of your invention have been developed or can be further developed during prototyping. Choosing when to start the patent process is a fundamental decision for start-ups.

Waiting too long may result in the inadvertent loss of your patent rights, but filing an application too soon can waste precious capital, forcing you to face a cost schedule that your company may not be prepared for. An invention must be new in order to apply for a patent. Patent law defines “new” as an item that has not been patented or is not available to the public before the filing date. The article must also not have been described in another previously issued patent. The right time to file a patent application is ultimately based on a combination of business and legal factors, which is why, unfortunately, there is a lot of misinformation when it comes to patents for startups. The conclusion in this regard is that patent costs can begin to amount to tens of thousands of dollars within one year of the filing of the initial patent application. The deadline to start filing foreign patent applications is also one year from the filing of the initial provisional patent application, and foreign applications can be even more expensive than those in the United States.

Please note that provisional patents cannot be extended, so you will have to file a regular patent application before the end of the 12-month provisional period. For example, assuming that you first file an application for a provisional patent (which is also usually the best option for new companies), this begins to elapse a year before your non-provisional patent application.

Forrest Kemmerer
Forrest Kemmerer

Hipster-friendly internet trailblazer. Music specialist. Incurable bacon buff. Lifelong social media lover. Certified coffee junkie. Hardcore explorer.

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