Most of our clients who meet us for the first meeting ask us this question: What should they do first- file a patent application or develop a prototype before filing a patent application? There is no correct answer to the question as there can be arguments in favour of both options.
FILE PATENT BEFORE PROTOTYPING…
Let us now look at the point of filing a patent application before prototyping.
Generally, a prototype is fabricated by third party companies. There are inventors who have the capabilities to fabricate the prototype in their premise. The inventor could ask the third party company to sign a non-disclosure agreement (NDA) before disclosing the inventor’s idea to the third party. Having said that, not all the third party companies would agree to sign the NDA since they might be involved in similar technology. Therefore to avoid such circumstances it would advisable to file the patent application to obtain protection before embarking in the manufacturing of the prototype.
Most of the countries adopt the “First to File” system as compared to “First to Invent” as was practised by the United State of America until recently. In the event, the inventor decides to wait for the prototype to be fabricated then there is a risk for someone to take the first move to file for the patent application for the same idea.
All patent applications once filed at the Intellectual Property Office (IPO) will be subjected to examination whereby the Examiners will conduct a prior art search and evaluate the patentability of the applications and issue an examination report with regards to the novelty, inventive step and industrial applicability. Upon reviewing the examination report, the inventor would be able to analyse the existing prior art documents which are cited by the Examiner in the examination report and thereafter design the prototype around the disclosures in existing patent documents.
Looking at the business angle, a registered patent provides the exclusive rights for the owner to exploit the technology being claimed in the patent. This gives the rights to the owner of patent to licence the technology or to sell the patent without the need to fabricate the prototype.
Further, looking at the cost, especially for start-ups and small medium enterprises, it may be advisable to start with patent application due to their budget constraints as the cost for filing a patent application is generally cheaper than the cost for producing a prototype.
DEVELOPING PROTOTYPE BEFORE PATENTING…
Let us now look at the point of developing the prototype before filing a patent application. ‘Enabling disclosure” is one of the requirements of filing a patent application whereby the inventor would need to disclose sufficient information which allows the invention to be produced without any further research by a third party. Next question is how to obtain such information by having a basic idea without making a prototype? Under this circumstance, it is easier to describe an invention once a prototype has been fabricated and tested.
Most of the time, the inventor realises that by producing a prototype, there is always room for improvements and the inventor can include those changes and improvements while fabricating the prototype.
How to consider those changes which produces a better prototype than the first prototype? This can be done by filing multiple patent applications. The first application covers the initial disclosure of the prototype and thereafter the inventor can decide whether to file for a subsequent patent application. This would require a substantial evaluation of the features which has been identified as improvements and whether these features have an impact on the inventor’s business perspective as there is a cost to be considered for filing the subsequent patent application.
Another aspect which needs to be considered for filing subsequent patent applications is the inventive step criteria. “Inventive step” is one of the three requirements to fulfil the patentability of an invention. An inventive step involves an advanced technical feature as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
Further, most inventors have the thought that a prototype is the best measurement to identify the market and the demand for the invention and also before investing into patent rights. However, disclosing the invention to the public would destroy one of the major requirements of filing a patent application, “novelty” of the invention. Therefore, it is advisable to seek for an opinion from Intellectual Property (IP) experts on how to test the market without jeopardizing the patenting strategies.
In conclusion, it is very subjective to decide on what should be the first move, patent or prototype. The decisions, however, depend on the nature of the invention and level of details of the invention have been developed or will be further developed during fabrication of the prototype.
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