In this episode of Patent Pending Made Simple, Jamie and Samar talk about the ins and outs of prototyping and whether you should have one before filing your patent application. They discuss the costs of prototyping, how it can help you in the product development process, and what you should consider before prototyping your invention.
Chapters
00:00 Introduction and Background
03:49 Is a Prototype Necessary Before Filing a Patent Application?
07:34 The Benefits of Prototyping in the Patent Process
10:17 Factors to Consider When Deciding to Prototype Before Filing a Patent Application
Summary
The conversation discusses whether a prototype is necessary before filing a patent application. It is clarified that there is no legal requirement to have a prototype before filing a patent application as long as the invention is described in sufficient detail. However, prototyping can be beneficial in working out kinks in the invention and discovering potential changes that may need to be made. The decision of whether to prototype before filing a patent application depends on factors such as comfort level, cost, goals, and the nature of the invention.
Takeaways
There is no legal requirement to have a prototype before filing a patent application.
Prototyping can help work out kinks in the invention and discover potential changes.
The decision of whether to prototype before filing a patent application depends on factors such as comfort level, cost, goals, and the nature of the invention.
Transcription
00:01
Samar Shah
Hello and welcome to the patent pending Made simple podcast. I'm your host, Samar Shah, and with me is Jamie. Jamie, how are you?
00:10
Jamie Brophy
Hey, Samar. I'm good. Squeezing in a last swig of coffee before we chat today. How are you?
00:16
Samar Shah
I am doing well. I am glad you'll have a defense against my exceptionally calming voice here. Oh, man. I got invited to this seminar thing as part of my continuing legal education, and it was about sales and lawyers. And there was this guy who was, like, selling this, I don't know, sales training to lawyers and just seemed disingenuous to me. You know, one of the things he was talking about was like, if you're going to sell an expensive product, you need to feed that into the minds of the listener so that when you get to an expensive price point, you have kind of intercepted that thought in some way. And I was like, man, that is a really scammy way to do this. And then I remembered that, like, there was this, like, meta study of small businesses that have failed.
01:09
Samar Shah
And, like, a large percentage of them, their biggest line item expense was hiring a business coach. Some of them charge you 20, $40,000 a year. And I was like, that's just a crazy industry where you have a business that's struggling and they're spending a ton of their money into how to get better.
01:29
Jamie Brophy
Yeah. Oh, that's cringy.
01:32
Samar Shah
Yeah, I guess. I mean, it's like the most vulnerable population that somebody is preying on, for lack of a better term. And it reminded me that the best advice that I've ever gotten, you know, like in fitness and health and in business, is just to do the small steps that make you better. And if you want to lose weight, you should probably just go for a walk for 20 minutes and increase that by five minutes every week. It's very straightforward advice, and you probably don't need to pay someone for that. But I guess we as human beings are attracted to the fad diets and all that stuff, and maybe fad kind of business plans and marketing plans and all that stuff instead of the slow, incremental, like, small steps towards successes, which is what I've always been a proponent of.
02:21
Jamie Brophy
I think that's just human nature, right? To want the quick fix and get to your goals right away. But yeah, and I think the patent process is very much like that. Some of these things that you're talking about, you have got this big goal. There are so many things you need to do to accomplish it. And, yeah, you just have to take it one day at a Time. One little step at a time.
02:43
Samar Shah
Yes. Thanks for helping me bring this around, Jamie. That's exactly what I was thinking about. But yeah, and the other thing I was thinking about is our software, the patent pending made simple software where I think for a lot of people spending a ton of money, thousands of dollars on a patent application may not make a ton of sense. I think the software is a slow incremental step towards moving forward and getting a patent application done. And the podcast is also the same thing, right? Learning all these requirements and things you need to watch out for one step at a time. I really like that about what we.
03:17
Jamie Brophy
Do thing for little to no cost. Hopefully our listeners are getting something out of it.
03:23
Samar Shah
I agree. I hope so. I've heard a lot of really good feedback. I think people are getting a lot out of these podcasts, so I am happy to be a part of that. Not dramatic improvement or small incremental steps towards a better pan application and a better process. I'm happy to be a part of that.
03:41
Jamie Brophy
Yeah, me too. Oh, that is good to hear.
03:43
Samar Shah
All right, Very good. So what is today's topic, Jamie?
03:46
Jamie Brophy
So today I think we're going to talk about something that comes up for us occasionally, and that is the question of whether you need to have a prototype before you file for a patent application. So, Samar, you want to take a first stab at the answer there.
04:02
Samar Shah
This is going to be the easy one today. There is no requirement to having a prototype before you file a patent application. We get this question posed to us all the time that, hey, I haven't actually made this thing yet, or I'm still trying to find 3D modeling company or a prototyping company. Can I still file a patent? And the answer is almost always yes, absolutely.
04:22
Jamie Brophy
There is a requirement that your patent application has to describe your invention in sufficient detail that a person of ordinary skill in the art would be able to read your patent application and basically duplicate your invention. Be able to make and use your invention just from reading your patent application. So that's the standard of how much detail needs to be in your patent application. A prototype can help with that. But sometimes you might already have that level of detail without making a prototype.
04:54
Samar Shah
Yeah, that's right. So there are two parts of this question. One is what is required from a legal perspective, which I think you addressed here. The second part is should you file a patent application if you haven't done a prototype from a kind of a practical perspective? So I'm sure we'll get to the practical in a second, but you're right, the 112, the enablement requirement is something that you need to think about. You need to describe the invention in enough detail that somebody else, a person for a skull in the art, can make and use the invention. The other requirement, I think of it as a Section 101 requirement, is that your invention has to be useful.
05:34
Samar Shah
And this is an esoteric topic that I've never seen come up actually, other than my law school exams, which, you know, for a utility patent, it has to be useful is one of the requirements. And one of the ways that you can be not useful is if. If the invention is too speculative or hypothet. Right. And the famous examples that we always talked about in law school were like time machines and perpetual motion machines. Those things are considered too fantastical or hypothetical. In those cases, you can't get a patent without. Even without a prototype.
06:09
Jamie Brophy
Yeah. This reminds me of. My kids come up with these things all the time. I. I have an idea for a robot that's going to clean my room and make me food. They saw an episode of the Jetsons or something, and I'm like, yeah, you can get a patent on that. It's a great idea, but you have to actually develop it if you want to get a patent on it.
06:28
Samar Shah
Yeah. The shorthand terminology that I always use is, would you have kind of reasonable expectation of being able to make this? Right. So a robot that will clean your room, you need to, like you said, Jamie, describe it in enough detail that somebody can reasonably make it. And if you don't have that level of detail, then you're probably not there from a patent perspective.
06:49
Jamie Brophy
Right. Yeah. So should we move on to the practical side of things? Maybe we should talk about when it is a good idea to get a prototype, or is there anything else we should talk about as far as the requirements of the patent application?
07:03
Samar Shah
Yeah, I think we've covered it. The legal side is very clear. You don't need a prototype to get a patent application done. As long as your invention is not too hypothetical, or as long as you can describe it in enough detail, you're usually good to go from a patent perspective. So, yeah, let's talk about the practical. That side is a little bit more nuanced.
07:24
Jamie Brophy
Yeah. So I think we see this frequently where somebody goes ahead and files a patent application without doing a prototype, which is totally fine. We've described the device in sufficient detail and we've met all the requirements of the patent application. And then while their patent application is pending, they go ahead and make a prototype or they start trying to manufacture it and they discover during that process that there are some things about their product that need to change. So then we have to go back and analyze the patent application and determine whether those changes are still covered, whether we might possibly need a new patent application. The changes are if they're pretty big changes. The pro. The prototyping process can help you work out any kinks in your invention.
08:12
Jamie Brophy
And a lot of times the prototyping process can make you realize there are issues with your invention that you didn't know about or that you didn't think about before doing the prototype or help you realize that there are other ways to do certain things with your invention. There are definitely some benefits of prototyping. Do you have anything to add to that, Samar?
08:33
Samar Shah
Yeah, I think that's a good. A good point. The additional piece is that prototyping can sometimes be very expensive. Right. Or getting an understanding of what large scale manufacturing would look like or even small scale manufacturing would look like. All that stuff is financially very capital intensive. And getting an idea of that is helpful right before you embark on this journey with your product. Because if you have to outlay 30, 40, $50,000 to get a product onto the shelves, then I would like to know that. Or I spend a bunch of money on a patent application. So there is a bunch of financial information and a bunch of other metrics that you'll identify by going through the prototyping process. And that's helpful even before you take your first step.
09:22
Jamie Brophy
Yeah, the prototyping process can be expensive. I feel like it's getting a little less expensive with how prolific 3D printing is nowadays. That definitely helps with certain products. But even if you don't do a prototype, just getting engineering drawings sometimes is sufficient or can be helpful with working out some of those kinks in your invention.
09:45
Samar Shah
Yeah, that's right. Yeah, we know some fantastic 3D prototyping folks who do a really good job. I think our last client who got 3D prototypes done, they spent under $200 to get it done. It's pretty incredible. So if you guys, the listeners, need referrals or want to talk to 3D prototypers, we're happy to connect them to you. Just email us or email Jamie.
10:10
Jamie Brophy
Thanks, Samar.
10:12
Samar Shah
You're welcome. Let's talk about this. Jamie, what about the flip side? When do you think or if ever do you think it's a good idea to file a patent before you prototype? What do you think about that?
10:23
Jamie Brophy
Yeah, I think a lot of our Clients do that, and I. And that's totally fine to do. And I guess you need to weigh the pros and cons of filing an app patent application sooner than later. If you've had any public disclosure of your invention, you might need to file your application sooner than later. You might need to get that filing date soon. And the prototyping process can delay the filing of your patent application. In that case, you would probably want to file your application before you do a prototype. And like we already mentioned, the prototyping process can be expensive. So it might be a good idea to file a patent application and then work on finding investors or potential licensees, things like that. Do you have anything to add to that, Samar?
11:09
Samar Shah
Yeah, yeah, I think that's right. It really depends. I think this conversation about prototyping first or filing a patent first, or doing any R and D or development work before filing a patent, vice versa, I think, comes down to a few different factors. I think the number one is comfort level. Right? So we have clients who get very nervous about proceeding with the prototyping step or the R and D step without patents. And then we have other clients who feel very comfortable about it. Right. So they're happy to prototype and develop and even sell their stuff without patents. And then if they hit certain metrics, then they'll come to us and want to file a patent. But I think you have to take into account your comfort level. We're human beings, after all. Right.
11:54
Samar Shah
Can't really make a decision in a vacuum if you're not going to feel comfortable about these things. So I think that's number one. Just know yourself and what makes you comfortable. The other piece of this is the cost. Right. For example, like medical device companies or pharmaceutical companies, they'll spend tens of millions, $50 million sometimes developing a product. In those cases, they'll definitely want to file patents before they go down this road. Right. Very expensive road to. To build something. But then we have other clients who build a prototype under 100 bucks. You have to also just take into account the cost of the prototyping. Right. If you're going to spend a lot of time and resources on prototyping, it's a very complicated thing, then you may better off filing a patent first before you expend a bunch of money prototyping.
12:43
Samar Shah
If it's going to be relatively cheap for you to prototype, then you might as well prototype first and then file patents afterwards. So there is that factor. There's probably a few more things to think about, Jamie, but I Think maybe those are two big ones.
12:57
Jamie Brophy
Yeah. I think the only other thing I would add to that is it also depends on what your goals are with your patent application. Maybe it's not your intention to ever manufacture and sell that product, but rather your intention is to get a patent and find a license. And in that case you can probably avoid the expense of going through the prototyping.
13:19
Samar Shah
That's right, yeah. Yeah. Or some of our clients will start a Kickstarter campaign. So you have to think about the timelines of those things and when you're going to be making a public disclosure. A lot of prototyping companies will sign your non disclosure agreement, which will give you some protection. But I know we have clients who feel uncomfortable with just having an NDA level of protection. Like they want an additional layer of protection like a patent. So the patent can help with that. But it really depends on who you're going to end up telling. Right. If it's making you feel comfortable that this person who's receiving my information is reliable and trustworthy, you work with them a few times, then I think you can push the patent a little further into the future.
14:04
Samar Shah
But if you're going to be disclosing it to someone, you're not really sure if it'll stay confidential or if they're overseas, might be difficult to enforce your non disclosure agreement. Generally it's just hard to enforce an NDA. Right. Because once the toothpaste is out of the tube from a disclosure perspective, it's really hard to put it back in. In those cases, the patent might be the way to go first.
14:28
Jamie Brophy
Yes, absolutely. Another thing to think about is having a prototype might help you with your marketing. Your customers being able to physically interact with your product might help with marketing or selling your product. So I think that's another factor to consider. I think it just comes down to each individual and what their goals are with their product, with their invention and what their business goals are. And I think it varies greatly from individual to individual.
14:59
Samar Shah
Yeah, I'm glad you mentioned that, Jamie, because yeah, it also depends on the invention because we have a lot of clients who want to license their invention and for many of them they don't need a prototype at all. Right. Like they just need a nice sell sheet, like a picture of their invention and it's pretty self evident how the invention is going to work. So it's not like you need to go and send your prototype to people for them to consider licensing your invention. It's very self evident. There are other inventions where it's not self evident at all. Right. How the invention would work, how it would all fit into a casing, for example. In those cases, having a prototype is very valuable and important part of the sales or licensing process. So yeah, it really also depends on the invention itself.
15:44
Samar Shah
That's a good point.
15:46
Jamie Brophy
Yeah, I think that about covers it, Samar, unless you have anything else to add about prototypes. I think this was a lot of good information again today.
15:56
Samar Shah
Yeah, I think so. I'm glad we the legal side was clear this time for a change. I'm mad about that, but yeah, no, this was great. Thanks. Thanks Jamie.
16:04
Jamie Brophy
Okay. Thank you Samar. Have a good one.
16:07
Samar Shah
Thank you for joining us on the Patent Pending Made simple podcast. I hope you enjoyed our show. If you'd like to receive updates, view the show notes, or access a direct link to any resource, go to the episodes page on patentpendingmatesimple.com to help others find our podcast, please, like, share and subscribe. Thanks again for tuning in. I look forward to having you with us next time on Patent Pending Made Simple. This podcast has been hosted by outlier patent attorneys and is not intended to, nor does it create the attorney client privilege between our hosts, guest, or any listener for any reason. The content of this podcast should not be interpreted as legal advice. All thoughts and opinions expressed herein are only those from which they came.
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