As a patent lawyer, I’m often asked if an invention has to be proven to work before it can be patented. Generally speaking, a working model isn’t necessary in order to receive a patent.
However, there’s a catch. The USPTO has the right to ask for a working model (under 37 C.F.R. 1.91), and can withhold the granting of a patent until that model has been made available for their examination. When inventors come into my office without a model, I often stop them and ask, “If the patent office asked for a working model, what would you do?” You don’t want sink time and money into the patent process, only to hit that roadblock and not be prepared.
So, it’s important to take a moment and ask yourself, “When the patent examiner takes a look at my application, is there anything in it that would make him or her question my invention’s feasibility and want to see proof of its functionality?” In many cases, you can get away with a well-designed simulation of your product. But there are cases in which a working model will be necessary to assuage the doubts of an examiner.
The most common reason an examiner will want to see a model is if an invention violates the laws of physics.
This may sound like an issue that is only a concern for crackpots attempting to patent perpetual motion machines—and the USPTO has received hundreds of such applications over the years. However, many very real and useful inventions have received patents specifically because they defied expectations, and were thus clearly novel, non-obvious inventions that delivered greater benefits than would have been reasonably expected.
A few years ago, I represented a client seeking to patent an invention which used a spring with more than one point of equilibrium. It’s generally understood in physics that a spring under load has a single point of equilibrium—a state of rest. As a consequence, the examiner looking over my client’s application was caught off-guard by the inventor’s assertion that the invention’s spring assembly had multiple points of equilibrium, and wanted to see proof of this. The inventor filmed a product demonstration and uploaded it to YouTube for the examiner, and the examiner immediately recognized that the inventor was right.
Demonstrating that your invention is functional is almost always a good idea.
Let’s step away from the technical considerations of obtaining a patent for a moment, and focus on the practical. What do you want to accomplish by obtaining a patent? More specifically: Is your goal to generate revenue?
If this is the case, then you should have a working model. Oftentimes, the process of refining your ideas into an actual working model—also known as reducing an invention to practice—will help to isolate the innovations that will make your invention patentable, and ultimately, sellable. Many inventors have rushed to patent an idea, only to discover that in order to make it work, they have to make alterations that necessitate the filing of another patent and the expenditure of even more money.
Taking the time to create a working model will almost certainly strengthen your patent claim, calm any doubts that examiners might have about your device’s effectiveness, and increase your odds of making money.