Do I need to Prototype My Invention Before I Apply for a Patent?

Breadboard Circuit Prototyping
Nicolas Thomas

Prototyping your invention is not necessarily required to file for or receive an issued non-provisional utility patent. However, the process of making a working prototype can tease out complete development of the structures of your invention. Increased development can then aid in accuracy of the scope of patent protection.

Legal Standard for Describing an Invention in a Patent Application

In order to receive a granted patent, the application must describe the invention with sufficient detail. More specifically, the description must enable one of ordinary skill in the art to make and use the invention without undue experimentation. The underlying public policy is that the inventor will receive a short term monopoly in exchange for teaching the invention to the public. However, application of this rule is up for interpretation, especially the phrases “one of ordinary skill in the art” and “undue experimentation.”

One of Ordinary Skill in the Art

This hypothetical person is assumed to have the skill and education of a typical person in a given field. For example, an invention related to mechanical engineering would have to be described such that mechanical engineers could understand the disclosure.

Undue Experimentation

The mechanical and software fields may be considered “predictable” fields. In these fields, one of ordinary skill can imagine and reason through many variables with expected results. This helps reduce the required experimentation to recreate the invention. Therefore, the inferences of the person of ordinary skill in these areas may allow a description without including underlying undergraduate-level problem solving patterns.

In “unpredictable” fields, such as pharmaceuticals, additional explanation of drug synthesis, clinical trials, dosages, and experimental procedures and results may be required. This is due to the empirical nature of chemistry. For example, sodium and chlorine are both toxic to the human body. However, sodium chloride (table salt) is a necessary dietary staple. Therefore, the description may need to explicitly point out typical patterns and how the invention does not fit the pattern.


If the invention can be sufficiently described, then the application is technically complete regarding the described subject matter. However, pictures or drawings can show mechanisms that words alone cannot. Furthermore, creation of the drawings can force critical thinking through unanticipated problems.

Similarly, developing a prototype can help reveal problems in reducing the invention to actual practice, even beyond the drawings.

Racing the Clock to File a Patent Application

If an inventor is running out of time, such as when racing a competitor or running up against a statutory bar, the inventor could file a provisional or utility application with the current level of description. After the provisional, the inventor can file a non-provisional utility with the improvements. The old material has the first filing date and the new material has the second filing date. After the non-provisional, U.S. patent law allows for a continuation-in-part, wherein additional matter (improvements) are disclosed. However, the base invention has the first filing date and the newly disclosed improvements have the second filing date.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

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