Forums: Discussions for entrepreneurs and small business.

I am caught in a whirlwind that I believe a lot inventors go through...I have an idea that has to deal with electronics and I am pulling my hair out and not sleeping over this...Should I get a Prototype or have an attorney apply for a patent 1st? I do not know how to protect my idea to start a prototype before a patent...I emailed an attorney local attorney that I was recommended to and he never got back to me...I do not know who to trust and I am stuck...Any ideas would be greatly appreciated...

You can file your provisional patent application now to protect your idea and it sets the start date for your invention. The PPA gives you one year to file the complete patent application. Also, be sure you are keeping a good inventor's log with all your notes and drawings.

Best regards,

Molly Donaldson

I agree, it is quite possible to file a provisional patent or even a full patent without a working prototype.  The patent office itself lists as one example, and inventor who invents an improved eraser that uses "moon dust".  Although as a practical matter, unless you have an inside track at NASA, "moon dust" is impossible to obtain, this still could be a valid "prophetic" patent.

Keep in mind, however, that to be really worth anything, both the provisional patent and the regular patent must be novel, non-obvious, and disclose the concept in enough detail that a skilled person could reproduce the invention.  If you fail to do this, you may end up with a false sense of security thinking that you have adequate protection, only to find out, possibly years later, that you do not.

You may want to consider proving proof of concept prior to filing your patent. What do you do if you file a patent and then find out your concept does not work and you have to drastically alter your design to the point your patent does not cover the original concept?

I tend to recommend a prototype first.  Especially if the prototype can be completed without public disclosure.  Patents can be expensive for a product that may not succeed.  IMHO, you have to remember that the primary purpose of a patent is to help spread the knowledge to allow for further development and leverage of one patented technology into others.  This primary purpose is a technology development tool.  The secondary purpose is to protect the inventor.

Believe me that there are engineers scouring the patent abstracts as a means of idea generation every day.  The longer you can keep your new product a secret the better.  As soon as you start down the patent road, information becomes public knowledge.  I think the current patent culture does a great job of the primary purpose of sharing technology, but I am not convinced that it does a very good job of the secondary intent to protect the inventor.

I am sure there are plenty of patent lawyers here that will disagree but as a small company that helps inventors develop products, prototypes, and manufacturing methods, my experience tells me to prototype first.

Best of luck.

Mike Bongiovanni

www.inautomation.com