File or Fabricate: Which Comes First, the Patent Application or the Prototype?

By Joel Cheong

Consider the following fictitious scenario:

Eddy Sun is a seasoned engineer who developed a prototype of a self-powering cold fusion lamp for refrigerators in the 90s that provides both illumination and refrigeration effect, but due to management shelving the prototype in favour of eco-friendly refrigerants, a patent application for the prototype was only filed in early 2015.

Tetsu Lau is a brilliant college undergraduate who experienced a brief flash of ingenuity while intoxicated during a foam party and conceptualized a theoretically workable self-powering cold fusion lamp to keep his beer cold and stay on after the refrigerator door is closed. Sobering up days later, he filed an application for the invention, which was essentially the same as Eddy Sun’s, in late 2014.

The question now is this: To whom would the patent be granted?

Malaysia practices what is called the “first-to-file” rule, meaning that the first person to file the patent application is entitled to the rights to the invention. Therefore, even if Eddy developed his prototype in the 90s, the young upstart Tetsu would be entitled to the patent because of the “first-to-file” rule as he filed his application before Eddy. After reading the preceding sentence, I believe all our prospective inventors are going to jump off their seats and make a mad rush to MyIPO to get their application filed.

However, consider this: What if Tetsu in his intoxication made a mistake in his calculations which renders his invention unworkable? Or that he had left out an essential fact that is crucial to the working of his invention?

One patentability requirement is that the invention must be industrially applicable, which simply means that the invention must work. Applicants who file an application for a conceptual invention (theoretically possible, not reduced to practice yet) run the risk of their invention not functioning when it comes to actual reduction to practice. Another point to consider is that the invention must be sufficiently described such that a skilled professional such as a technician is able to read the specification and reproduce the invention. Unworkable or insufficient disclosure of an invention can be grounds for a patent to be invalidated since it does not fulfil the industrial application requirement. Therefore, inventors may find security in having a working prototype for reference in describing the invention.

Now, let’s spin things around and consider this issue from another perspective. Eddy, as an engineer, has access to his company’s resources, while Tetsu, as an undergrad, is dependent on his parents for allowance. It would be far easier for Eddy to fabricate a working prototype in his company’s workshop than for Tetsu to do the same in his dorm room using parts purchased from RadioShack. Therefore, it would make more sense for Tetsu to first file an application for an invention that would, in theory, function, as it would be quicker and easier (and not to mention more economical) than to go through the process of fabricating and testing the prototype and in so doing, lose in the first-to-file race.

Filing the application first also helps Tetsu to freely pitch his invention to potential investors, since he does not need to worry about third parties stealing his invention by applying for a patent under their name. The same cannot be said if Tetsu had instead created a working prototype first, and is pitching his invention by demonstrating how the prototype functions. He will have to take steps to maintain the confidentiality of his prototype such as by subjecting his potential investors to non-disclosure agreements, which may not be something potential investors are readily agreeable to. Still, potential investors may not be willing to risk investing in unproven concepts and would insist on seeing an actual prototype. Also, having an actual prototype allows one to assess the marketability of the prototype to ascertain whether it is worthwhile pursing patent protection. In this regard, Eddy can conduct a market survey using a refrigerator with his prototype installed without disclosing the prototype. After all, patents are only of value if the product sells well.

In consideration of the facts above, the dilemma remains: Which should come first, the patent application or the prototype? The person who files an application first with an incomplete or incorrect disclosure risks having an unenforceable patent, and the one who has an award-winning prototype and a beautifully written specification but files the application late risks losing the patent to an earlier applicant.

Fortunately, there is a solution. Enter: The Provisional Application. A provisional application is one that allows an inventor to first file an application with a rudimentary disclosure and then work on developing a prototype, and within twelve months from the date of the provisional application, file a complete application. What is needed is a description of the invention, at least one claim and where crucial, a set of drawings. It bears mentioning, however, that the provisional application should not be poorly described but should disclose as many details as possible. This helps to mitigate any issues that may crop up later on in the prosecution or litigation of the patent.

Whether you are an expert in nuclear physics or someone bursting with bright ideas, remember that sometimes neither the perfectionist tortoise nor the haphazard hare wins, but the savvy mousedeer who does it right.


Note: The information provided in this article is intended for informational purposes only and should not be construed as legal advice.

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