The Necessity of Prototypes

Strangely enough, when you make application to the U.S. Patent Office for protection of an invention, a proving model is no longer required. Models were once part of the application, however, and the models became part of the record of the patent. They demonstrated to the examiner that your idea worked. This requirement disappeared after 1880.
But you still need a prototype for many reasons:
◆ A prototype can prove that you are the inventor if you are ever challenged by someone who claims otherwise. Put a photo of the prototype in your inventor’s notes.
◆ A prototype can work out any kinks in the invention and demonstrate that the idea works. It provides a proof of function.
◆ A prototype can help ensure that your invention is the right design (dimension, shape, and form).
◆ A prototype is an invaluable tool when you present your idea to potential investors or licensees.
◆ A prototype brings your idea to life. It betters the odds that your invention will become a reality.
◆ A prototype makes people you meet along the way to commercialization take you more seriously.
“The factories I am dealing with in China told me that I was the very first customer to submit a working prototype for evaluation,” says Window Wizard inventor Ken Thorne. “I can honestly say that my submitting a working prototype to the factory saved me months of R&D and engineering hours, not to [mention] money.”
A prototype gets everyone on the same page and helps avoid misinterpretations. Building a prototype will prepare you to draft your patent specification and claims (see Part 5). It helps identify key features that should be included in your patent application. A prototype also makes it much easier for your patent draftsman to do accurate drawings. Finally, a prototype helps verify the best materials and processes for the manufacture of your invention.
Bright Ideas
Minneapolis-born Patsy O. Sherman and Samuel Smith received U.S. Patent No. 3,574,791 on April 13, 1971, for their invention of block and graft copolymers containing water-solvatable polar groups and fluoroaliphatic groups, otherwise known as Scotchgard®. Sherman and Smith were employees at 3M Company when they collaborated on what became the most famous and widely used stain repellent and soil removal product. What prompted this innovative product? An accidental spill of a fluorochemical rubber on a tennis shoe. The shoes showed resistance to water and oily liquids. This lab accident led to the Scotchgard® family of products. Sherman holds 13 patents with Smith in fluorochemical polymers and polymerization processes. The pair was inducted into the National Inventor’s Hall of Fame in 2001.
“There was a time when drawings were an acceptable form of submission and companies were willing to invest in the breadboards and prototypes,” says Michael Brown, marketing and development consultant for Duncan’s WarStone™ trading card game and a former vice president of marketing and development at Moto-Concepts. “Today companies expect inventors to submit proven concepts. They no longer want to risk investing in blue-sky ideas.”
Furthermore, people who are asked to commit money and resources to a product love to touch and feel prototypes—to kick the tires, so to speak. They typically won’t buy something from a verbal pitch or off a piece of paper. I say “typically” because there are exceptions to every rule.
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