3 Things to do Before Patenting

by Matt Nuccio | 13 Oct 2022

Industry Commentary, Op-Ed


One thing I've learned many times over is that not all patents have immediate value. In my experience I would even argue that most patents have no value. That being said I realize that today's seemingly useless patent could change the world tomorrow. Products like the 3D printer (patented in 1986) and the digital camera (patented in 1975) both were decades a head of their time. And while many of my clients dream that their concept is the next great thing more often than not, I am presented with patented concepts that look and sound awesome "on paper" with the reality being that they end up not translating well into physical form. Of course there are many reasons why this will happen with the most common problem being the inventor went straight to patent without making sure to solve any potential design issues in physical form. Can that be fixed? Very often that is a resounding "YES!", but it can also be quite costly. So.... exactly how does that happen? Well, in life I’ve noticed that surgeons like to cut, dentists like drill, mechanics like to replace parts and patent attorneys like to patent. If you go to your patent attorney as the first step, you may be very well skipping some vital and essential steps unknowingly. Here are 3 things to consider doing before filing for you patent.


1) Proof of Concept Prototype 

 In my 7th grade science class I learned that a hypothesis is technically "an assumption for the sake of argument". In the scientific method, a hypothesis is created before any applicable experiments have been done. So what’s the inventors experiment? …prototypes. One must truly prove that their concept is valid and workable through a process of making one prototype after another. Working out any "bugs" and testing and tackling any physical or technical issues that arise in the process is key. So, lock yourself in the basement with stack of toilet paper rolls, duct tape, rubber bands, glue and whatever it takes to prove that your hypothesis can translate to the physical world. It doesn’t need to look great. At least, not yet. In this early stage, it just needs to work! Once you have it working you can call up your attorney or visit the USPTO site and file your provisional patent application. That will buy you 12 months to iron out any other issues before you file for patent.  


2) Design for Costing 

 So now you have your Frankenstein'd proof-of-concept model and filed for your provisional patent. And yeah, it’s a real eyesore. But so what. It does what it needs to do. Is it ready to patent? Technically "yes", but if you’re working with shallow pockets you can lower your the possibility of adding extra zeros to your attorney's bill by making sure that your prototype does do what it needs to do, AND, it can be replicated and produced for the best possible price. If you don’t streamline your idea now, it may cost a fortune to amend your patent down the road. Often, when developing a product for mass production, we need to change processes, materials, sizes and mechanisms just to be able to have it produced. In addition, the good news is that generally, we can discover ways too greatly improve the product during this phase and those improvement will be vital to your patent. The more claims you site on your patent application the better your chances of getting a patent. If you wait until after your patent is issued you may find yourself spending big bucks amending your patent or worse becoming trapped by the now limiting ways your patent is written. 


3) Prototype Again 

Now that you have your concept streamlined, it is time to build a proper prototype that looks like/functions like the real deal. If all of your improvements on paper translate well into physical form by the time your provisional patent application matures you are golden! Not only would you have a solid patent, but you would have a product that looks great, functions great and without any costing issues. Ideal for any potential licensee to license or fantastic for any entrepreneur venture. 


Originally published in the September issue of Toy and Family Entertainment Magazine. Copyright 2022, Matt Nuccio, all right reserved.

patent prototype

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