Most of our clients who meet us for the first meeting ask us this question: What should they do first- file a patent application or develop a prototype before filing a patent application? There is no correct answer to the question as there can be arguments in favour of both options.
File patent before prototyping
Let us now look at the point of filing a patent application before prototyping. Generally a prototype is fabricated by third party companies. There are inventors who have the capabilities to fabricate the prototype in their premise. The inventor could ask the third party company to sign a non-disclosure agreement (NDA) before disclosing the inventor’s idea to the third party.
Having said that, not all the third party companies would agree to sign the NDA since they might be involved in similar technology. Therefore to avoid such circumstances it would advisable to file the patent application to obtain protection before embarking in the manufacturing of the prototype.
[ihc-hide-content ihc_mb_type=”show” ihc_mb_who=”2,3,5″ ihc_mb_template=”1″ ]Most of the countries adopt the “First to File” system as compared to “First to Invent” as was practiced by the United State of America until recently. In the event, the inventor decides to wait for the prototype to be fabricated then there is a risk for someone to take the first move to file for patent application for the same idea.
All patent applications once filed at the Intellectual Property Office (IPO) will be subjected to examination whereby the Examiners will conduct a prior art search and evaluate the patentability of the applications and issue an examination report with regards to the novelty, inventive step and industrial applicability. Upon reviewing the examination report, the inventor would be able to analyse the existing prior art documents which are cited by the Examiner in the examination report and thereafter design the prototype around the disclosures in existing patent documents.
Looking at the business angle, a registered patent provides the exclusive rights for the owner to exploit the technology being claimed in the patent. This gives the rights to the owner of patent to licence the technology or to sell the patent without the need to fabricate the prototype.
Further, looking at the cost, especially for start-ups and small medium enterprises, it may be advisable to start with patent application due to their budget constraints as the cost for filing a patent application is generally cheaper than the cost for producing a prototype.
Developing prototype before patenting
Let us now look at the point of developing the prototype before filing a patent application. ‘Enabling disclosure” is one of the requirements of filing a patent application whereby the inventor would need to disclose sufficient information which allows the invention to be produced without any further research by a third party. Next question is how to obtain such information by having a basic idea without making a prototype? Under this circumstance, it is easier to describe an invention once a prototype has been fabricated and tested.
Most of times, the inventor realise that by producing a prototype, there is always room for improvements and the inventor can include those changes and improvements while fabricating the prototype.
How to consider those changes which produces a better prototype than the first prototype? This can be done by filing multiple patent applications. The first application covers the initial disclosure of the prototype and thereafter the inventor can decide whether to file for a subsequent patent application.
This would require a substantial evaluation of the features which has been identified as improvements and whether these features have an impact on the inventor’s business perspective as there is a cost to be considered for filing the subsequent patent application.
Another aspect which needs to be considered for filing subsequent patent applications is the inventive step criteria. “Inventive step” is one of the three requirements to fulfil the patentability of an invention. Inventive step involves an advance technical feature as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
Further, most of inventors have the thought that a prototype is the best measurement to identify the market and the demand for the invention and also before investing into patent rights. However, disclosing the invention to the public would destroy one of the major requirements of filing a patent application, “novelty” of the invention. Therefore, it is advisable to seek for an opinion from Intellectual Property (IP) experts on how to test the market without jeopardising the patenting strategies.
In conclusion, it is very subjective to decide on what should be the first move, patent or prototype. The decisions however depend on the nature of the invention and level of details of the invention have been developed or will be further developed during fabrication of the prototype.
African nations where it is steamed and chopped but contain low amounts of micronutrients especially pro vitamin A and iron that are required in our body. Jean-Yves Paul, one of the Queensland University of Technology researchers said banana which is called ‘matoke’ in Uganda is the perfect fruit to boost vitamin A and iron levels.
The researchers’ concern for the people in Uganda is the vitamin A deficiency among the children. This deficiency would cause blindness, effecting their immune system to become impaired and what matters the most is that it can give serious impact to the brain development of these children.
This article is brought to you by KASS International, one of the top IP firms in Malaysia, with offices in Kuala Lumpur, Singapore, Indonesia and Myanmar. We at KASS International have the experience, expertise and resources to assist you in obtaining protection and enforcement for your IP Rights in all your markets – just as we have done for many other business owners throughout the years. For more information, do call us at (603) 2284 7872 or drop us an e-mail to kass@kass.com.my to make an appointment for a free consultation at our office to see how best your IP Rights can be protected locally and globally.
[/ihc-hide-content]
