Do you Need a Prototype to get a Patent for your Invention?
No, you do not need a prototype to get a patent for your invention. However, you must be able to reduce it to practice. In other words, when patenting your invention you do not need a prototype, but reduction to practice is required.
When you are looking to patent a new invention or idea, the recommended first step is to determine whether your invention is patentable. Specifically, whether your invention is patent eligible subject matter, useful, novel, and non-obvious. (If you are unsure about the patentability of your invention, click here to learn more about what can be patented.) If your invention or idea is patentable and a complete and proper patent application is filed allowing said invention, it is possible that you will be able to patent the idea without actually making it – without actually reducing it to practice. That is to say that you can patent the idea for an invention without actually having a prototype of the invention.
Important TIP: It is recommended best practice to work all the way through all the steps need to actually make a new invention and develop a prototype. Plus, we often learn important stuff about the details of the invention. Sometimes we even discover further new patentable inventions when prototypes are developed. Read more about patenting an idea in Carson Patents article: Can you patent an idea?
What is Reduction to Practice?
When it comes to patents, in simple terms, reducing an invention to practice is making the invention. In other words, it is reducing the invention into a tangible form or taking the invention from thoughts and making it so that it can be used. A prototype is an actual reduction. A written description is a reduction constructed with words, or a constructed reduction.
For patenting purposes, reducing an invention to practice happens in the detailed description section of the specification. The detailed description of a patent application must contain sufficient details to enable a person skilled in the art how to make and use the invention. It takes the form of a written description and drawings (usually) of how to actually make and use the invention. Reducing an invention to practice is constructive in a patent application. In fact, generally the United States (U.S.) patent office does not allow submission of prototypes.
Let’s use Thomas Edison’s lightbulb invention as an example to show the difference. The idea is a lightbulb to light a room at night thus making the room useful during the nighttime. The patent application for the lightbulb describes how to build the device to pass an electric current through a wire inside a glass container under a vacuum. In order for the patent application to be allowable the written description needs to have all the details of how to make the device such as using metal for the wire because it is known to persons who work with electricity that metal wires get white hot and emit light when when you pass an electric current through it.
The patent application would be allowable because a person skilled in the art would be able to construct a lightbulb from the description. This is constructively reducing the invention to practice. However, actually making the lightbulb and getting the combination of metal for the wire and current flow through the wire proper such that it lasted more than mere moments took over 3,000 designs before it was actually reduced to practice.
Reducing to practice can also apply to a process. Like with devices such as as the lightbulb construction reduction is the same – the written description of how to make and use the process. Actual reduction includes carrying out the actual steps of the process. No matter what your invention is – an article, machine, process, or manufacturer – reducing an invention to practice can be thought about as taking your invention beyond a concept and into its physical or practical form. Read more about reduction to practice at the USPTO.
Two Types of Reduction – Actual and Constructive
According to the USPTO reduction to practice is of two types; actual and constructive. Though they are both not required for patenting, understanding the difference between the two and to what they apply can help you to understand when and how to patent your invention, or in some cases, just your idea.
What is Actual Reduction?
Actual reduction refers to an inventors creation of an actual, practical, real-world rendition of the patentable invention into a working prototype, physical form, or process. Actual reduction to practice can be thought of as an idea or process that has come to fruition. It is when the inventor has actually created the physical version of their invention or established their process that then actually created whatever it was intended to create. Actually reducing an invention to practice is not required, so you do not have to actually make the invention in order to be able to apply for and be allowed a patent.
What about Prototypes?
A prototype is also considered actually reducing to practice as long as it is created and functions as intended. This means that if the prototype is given as a physical example of a proposed new invented article, it would have to function in the same way as the actual invention claimed would. Similarly, a prototype for an invented process would have to show the process preformed and that the intended results were accomplished.
Prototypes are not a required part of a patent application, unless the invention is a perpetual motion machine. This does not mean that prototypes should be dismissed – creating prototypes is a valuable and potentially very important activity. Development and engineering of prototypes frequently offers insights into the idea/invention that includes patentable subject matter.
What is Constructive Reduction to Practice?
Constructive reduction refers to the description of an invention or idea involved with the filing of a patent application. For the US Patent Office, filing of a patent application is deemed to be a sufficient for reducing an invention to practice as long as certain conditions are met.
In simplest terms, this basically means that your invention does not actually have to be created, it just has to be possible to construct it using the specification. The written description of the invention and art in its patent application must include enough detail and instruction to teach a Person Having Ordinary Skill In The Art (PHOSITA) how to be able to make the device, apparatus, or whatever the invention was intended to make. Of course, there can be new means and/or methods used to make the idea, but they cannot be speculative.
Is Reduction to Practice Required?
It used to be the case that reduction to practice had to be actual when an invention was presented for patenting. Providing a working prototype or functioning model in physical form was a necessary requirement for obtaining a patent. The reasoning behind this is related to archaic U.S. patent laws that operated under “first-to-invent” rules that used reduction to practice to determine which inventor had priority over a new invention or idea. In modern times, actually reducing an invention to practice is not essential.
It is sometimes even possible to patent an idea without an invention at all. This is because actually reducing an invention to practice is not required to obtain a patent. In other words, you do not have to actually make the invention in order to be able to apply for and be allowed a patent. It just has to be possible to make it. Thus, while actual reduction is not required, constructive reduction is required.
The amount of legal vocabulary, updated laws, and logistical challenges can make understanding things like reducing an invention to practice confusing. Thankfully there is the patent attorney or patent agent to interpret and navigate the legal patent landscape for us. Patent law is complex and navigating it for a patent application is often confusing. Carson Patents recommends seeking the counsel of a licensed patent practitioner to help.
Professional patent help can be expensive, and inventors often wish to look into the patentability of their language on their own before taking the step to hire legal help. So, to help inventors or anyone else to understand what reducing something to practice is, let’s work through one more example. The example below is setup to offer an example that applies all of the concepts about reducing an invention to practice.
Utility Patent Example – Constructive Reduction is Sufficient
For a utility patent actually making the device or apparatus not required. Imagine, for example, that you are make up artist and you are seeking out a patent for your new and exciting invention of a sponge cleaner. (if you are an inventor and think that you have actually invented something, please reach out to us for a free consultation). After you are assured that your novel sponge cleaner invention has not been previously patented and is patent eligible subject matter, we follow Carson Patents® 5 Steps to Patent and begin a written description of the sponge cleaner in preparation of filing the application with the U.S. Patent Office.
This is where reduction comes into play. The patent application and patent can both happen based on the constructed reduction written about and described in the specification. Though actually reducing to practice is not required, it may be helpful to develop a prototype for the sponge cleaner invention to ensure that it functions as it is described in writing. Developing a functioning prototype is actually reducing an invention to practice.
Plant Patent Example – Actual Reduction Required
For a plant patent actually making the plant is required in order to get a patent on a new plant. Unlike patenting a new device or apparatus, getting a patent for plant requires a biological deposit. Only plants that can be asexually reproduced can be patented, and samples are required to be placed on deposit during the patent application process for newly invented plants. Learn more about what plants can be patented and how that process works on our plant patents page.