As a patent law practice, we can’t provide commercial advice but we can certainly tell what we’ve seen has worked and what hasn’t worked based on experience gained from working with other clients and the patenting process. Basically, after you’ve filed your provisional patent application, done your market research and determined that a market exists for your invention, you should consider creating a prototype and conducting testing.

A prototype is a model of your invention that puts all of the things you have written in your provisional patent application into practice and can be used to woo funders, manufacturers, or distributors.

Why should you create a prototype?

Although there is no prerequisite that patentees have to build a prototype of their invention, the most obvious reason for creating a prototype is to have something tangible to present to potential investors and buyers.

Prototypes demonstrate the functionality of your invention and help you to discover more patentable details of your invention before you file your complete patent application. In general, at this early stage try to prototype as cheaply as possible. Stephen Key’s excellent ‘One Simple Idea’ contains a fantastic section on cheap and rapid prototyping.

In general, most interested parties that you approach won’t need a prototype that they can touch or interact with. Having a physical prototype is obviously first prize, but it’s amazing how far you can go with 3D renderings, videos, and photos.

How to prototype cheaply and easily

These days, you can use simple (and free!) programs such as Google’s ‘Sketch-up’ to very easily and quickly render a 3D model of your idea that you can show to interested parties in a presentation. This program is very easy to use and you could get a decent prototype drawing done within a morning.

You can also build a cardboard mockup of your idea and take photos of it. From most angles most people won’t even be able to tell that it’s made of cardboard if you play around with materials and lighting conditions.

Better yet, create a video of it and load it to an online player with a confidentiality setting. YouTube, for example, has a setting which keeps the video private and which allows you to control access to it by way of links and/or passwords. This can save you an enormous amount of money and still get the same results (or nearly the same results) than you would have if you had engaged the services of a prototype or industrial design company.

As mentioned before, it is important that you ensure that you own the rights to the design, so that you are in fact the IP owner. This is where IP assignment agreements come into play to ensure that the rights associated with any design are assigned to you or your company, whichever you prefer. Keep in mind that a complete patent application protects the ‘perfected’ form of the invention.

As you proceed along the road of developing your invention, you will almost always discover a flaw in your original design or think of a new feature you would like to add. If you obtain final/complete patent protection for your idea before you work out these snags, it will be too late to include them in the patent and you will risk losing the patent rights of the new or improved design to someone else.

You should try to get a prototype made in a way that creates a version of your product that matches your final product as closely as possible, but in a small quantity. There are two major advantages to having multiple ‘product quality’ prototypes: You can have multiple people looking at them and not worry much if one gets broken or is not returned, and you can put some on the market for sale for real and see what actually happens when buyers have the opportunity to purchase them.

Obtaining actual proof that the product will sell before you spend the large amounts of money often required for production tooling will substantially reduce the risk of you losing that money. Of course, make sure that the version that you’re putting on the market is protected with at least a provisional patent application and/or a design registration application (whichever is most appropriate, or both).


Who can help me create a prototype of my invention?

When you’re looking for a prototyper, you should go about it in much the same way as looking for a manufacturer: network with similar professionals, look on the Internet or in relevant publications, or search under headings like ‘designers, industrial’ and ‘engineer, product development’.

Before you contact a prototyper, you should have a clear picture of exactly what you need. Never approach a prototyper with rough sketches or a vague verbal description. Get a draftsperson to draft technical drawings of your invention. They don’t have to be intricately detailed, but they should include all essential dimensions and details required for the prototype to be constructed. Remember – it’s far less costly to change a design mistake on paper than it is to try to modify something that’s already in metal or plastic.

As mentioned before: If you hire a drafting, design or engineering firm to help create your product, you can very well end up with a co-inventor. If that engineer is required to do any real engineering and they come up with patentable matter, they must be cited as inventors in the patent application. To prevent that person from owning the invention along with you, you need an invention assignment agreement in conjunction with the actual consulting contract. The agreement specifies that you are commissioning the person to assist you, but that any patentable matter that comes out of this relationship will be assigned to you.

You still need to name the engineer or prototyper on your patent as an inventor, but if you have the agreement completed before you file, then that person has no rights to your patent. It may seem like a minor formality, but if you neglect to do it, the engineer could have equal rights to your invention.

Once you have created a prototype, you should conduct prototype testing. Make sure the product does what people want and performs well enough for people to buy it.Also, be sure your product has all the features end-users want. Let them try out the product, and gauge their responses. If at all possible, you should consider making a prototype for both mechanical testing and for market research. Do this no matter how sure you are that the product will sell.

Most inventions must go through three or four prototypes before they are perfected from both a manufacturing and a marketing point of view. In the long run, making those prototypes saves you lots of money and allows you to produce the best possible product. Filed Under: intellectual property, IP, patent, patent advice, patenting, prototype

Subscribe to get information and insights straight to your inbox