Do you need a prototype to patent?

[jconsta6]

Hi all,

I've had an idea.... the opening line I know from a million and one forum posts.

Basically it's a green money saving product without going into too much detail.

The problem is, although I know that all the technology is out there seperately, I've not seen it put together in the way I'd like to do it. I.e. I want to build one unit that includes facets of several differing current technologies to create a "new" item.

The thing is, I have no idea where to start putting the item together. I know I'll need a few specialists from a few different areas. I've checked and I can't find anything on the web similar, which as we all know - means one of 2 things either a) There is a good reason it's not already been done, or B) It is genuinely a new idea. (usually the former, but I'm still intrested in pursuing it.)

Anyway, the first thing I'd like to do is to get a patent on it as it will be a physical invention, however to do this am I correct in thinking I'll at least need detailed plans or even a prototype?

Apart from non-disclosures, is there any other way of protecting your idea in the developmental stages. i.e. I don't want to take the idea to a company who could put it together only for them to walk off with it.

I'm not really intrested in manufacturing the item as such, but would rather sell a licence for others to produce.

Of course if there are any electrical/IT appliance manufacturers out there then fell free to give me a shout too.

Comments? suggestions etc all welcome.

Thanks

JC

[broadhat]

I use www.briffa.com for all our Intellectual Property questions. Very helpful people and will probabaly give you a free consultation session.

[humpbackmaniac]

How did you get on JC? I am in a similar position myself.

[jconsta6]

I've not had a chance to speak to the afforementioned yet, but will be looking into it in more detail next week.

It looks like you don't need a prototype as such, as long as you know how to file the patent properly - which I expect eh guys above will be able to advise on.

I'll let you know how I get on, feel free to mail me through my profile if you like.

Cheers,

JC

[Mattt]

John,

One of my friends runs an electronic manufacturing firm, if you need any help or prototype SMT boards made up - let me know and I can pass on his details. They do a lot of stuff for the RNLI and the European Space Agency, he does know his stuff and is very friendly.

Matt

[Ultraviolet]

You don't need a prototype to file a patent, but you should definitely talk to a dedicated patent lawyer.

You will need sufficient drawings / artwork to explain your claims. Before you go down this route, you should check the patent office online for similar patents, and search the net thoroughly. If someone has an idea sufficiently similar to yours in the public domain (even if they haven't patented it), any claims you patent will be invalid.

Also, if you do go for the patent, you should insure it against infringement. The harsh reality is that the patent is only worth the amount of money you will pay to defend it. This insurance has to be done before filing IIRC, and definitely before the patent is granted.

Finally, do not disclose anything to anyone before the patent is filed. Even once filed, use NDAs as a further level of protection.

UV

[AlexB]

Ultraviolet said:

You don't need a prototype to file a patent, but you should definitely talk to a dedicated patent lawyer.

You will need sufficient drawings / artwork to explain your claims. Before you go down this route, you should check the patent office online for similar patents, and search the net thoroughly. If someone has an idea sufficiently similar to yours in the public domain (even if they haven't patented it), any claims you patent will be invalid.

Also, if you do go for the patent, you should insure it against infringement. The harsh reality is that the patent is only worth the amount of money you will pay to defend it. This insurance has to be done before filing IIRC, and definitely before the patent is granted.

Finally, do not disclose anything to anyone before the patent is filed. Even once filed, use NDAs as a further level of protection.

UV

All sound advice - you just need to be able to explain the invention sufficiently for a third party to understand it - a prototype can help as it can raise additional issues/problems, the solutions to which can be inventions in themselves. The insurance depends a bit on your business model - if the idea is that you licence third parties (exclusively or otherwise) to work within your patent then the licence can require that they bear any enforcement costs. There is of course the risk that someone infirnges before you have a chance to find a licencee.

www.ipo.gov.uk is the UK Intellectual Property Office and they are usually very helpful to inventors if you give them a call - they should be able to provide pointers toward local patent attorneys and a fair amount of helpful information. The more time you can invest in searching for similar inventions the better....

http://ep.espacenet.com/
and
http://www.uspto.gov/patft/index.html

...are two free databases online into which you can put keywords. If you find anything close to your idea (solving the same technical problem, or differeing by only a small amount) then make a note and let the patent attorney have a copy as this will significantly help the attorney to focus any patent draft and can save you wasting money in fees.

GOOD LUCK!
Alex