Do we need a prototype to file a patent and if no then what are the disadvantages of having a prototype? 11 Answers as of February 13, 2013

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DANIEL NESBITT
DANIEL NESBITT | Hasse & Nesbitt
A prototype is not necessary to file a patent application. I cannot see any particular disadvantage for making a prototype, that works. The one maybe if you later decide to describe your invention in a limited way, as requiring every feature of the prototype, which may not be the broadest invention that your could describe and claim.
Answer Applies to: Ohio
Replied: 2/13/2013
Ochoa and Associates
Ochoa and Associates | Susan Ochoa Spiering
You do not need to have a prototype to file a patent application. But it is recommended to have a prototype or something showing your invention works. In the past few years, patent examiners seems to want more data to show results, especially surprising results of inventions before they allow claims.
Answer Applies to: Texas
Replied: 1/25/2013
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
No you do not need an actual embodiment. There is no disadvantage that i am aware of.
Answer Applies to: Oregon
Replied: 1/24/2013
Law Office of Mathew R. P. Perrone, Jr. | Mathew Roy Patrick Perrone, Jr.
No a prototype is not needed in order to file a patent application. After the application is filed, and if you discover that the invention does not work, you must not proceed. If you get your patent and then discover your invention does not work, you must not try to enforce your patent. However, it can be useful to build and test a prototype before you file in order to help you refine your invention. It can also show whether it is a good idea to file the patent application or not. The only disadvantage of a prototype I can see, is a cost of building it.
Answer Applies to: Illinois
Replied: 1/24/2013
Eminent IP, P.C.
Eminent IP, P.C. | Paul C. Oestreich
A prototype is unnecessary to file a patent application. There are no disadvantages to having a prototype of the invention. When filing a patent application, the inventor only needs to possess a clear understanding of the inventive concept such that one of skill in the art could apply ordinary scientific and engineering principles to reduce the inventive concept to practice. While not required, having a prototype is useful when preparing and filing a patent application because it can be used as one of the exemplary embodiment described in the detailed description of the invention in the patent application. As always, an inventor is well-advised to seek the advice of a registered patent attorney when considering any aspect of intellectual property rights as applied to your particular facts.
Answer Applies to: Utah
Replied: 1/23/2013
    Tran & Associates | Bao Tran
    There is no need to having a prototype. The patent application serves as a substitute for the prototype. That said, the application should be detailed in describing how the invention should work and potential alternative implementations.
    Answer Applies to: California
    Replied: 1/23/2013
    Shimokaji & Associates
    Shimokaji & Associates | Michael Shimokaji
    You do not need a prototype to file a patent application. I'm not sure if there are disadvantages of having a prototype, other than the cost if you are only making the prototype for purposes of a patent application.
    Answer Applies to: California
    Replied: 1/23/2013
    Barton Barton & Plotkin
    Barton Barton & Plotkin | Maurice Ross
    You do not need a prototype, but I cannot think of any disadvantages of having one. The law requires that you establish that you have "enabled" the invention (i.e., that it really works). Your patent application must disclose your invention with sufficient specificity to permit someone of ordinary skill in the art to practice your invention without undue experimentation. Sometimes, it is not possible to meet this "enablement" requirement without having a prototype in hand. Other times you can satisfy the "enablement" requirement with a "prophetic" or "paper" example. Each situation must be evaluated on its own merit.
    Answer Applies to: New York
    Replied: 1/23/2013
    Webb IP Law Group
    Webb IP Law Group | Jason P Webb
    You don't need a prototype to file a patent. Prototypes cost money and take time. If they involve other people then you are also risking disclosure of secret information. They are often helpful, though.
    Answer Applies to: Utah
    Replied: 1/23/2013
    Banner & Witcoff, Ltd. | Ernie Linek
    No prototype is required. Instead, you need a written description of (a) what the invention is, (b) how to make it, and (c) how to use it. Having a prototype may make you focus only on that particular version of the invention - made with what you had available or could afford. The written description is not limited by parts availability or budget - create (in words) the "ultimate version" of the invention. You can also discuss parts that can be changed, optional add-ons, etc.
    Answer Applies to: Massachusetts
    Replied: 1/23/2013
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