To file a patent is it necessary to have a prototype?
In order to file a patent application a prototype is not necessary, but there must be technical planning of the object and the novelty principles on which it is based. If it is an invention or a utility model, the functional characteristics must be described in detail, whilst if it is a decorative item falling under the design or model registration, the drawings and the claims are of the outmost importance.
Often, when we patent an object without a prototype, we recognize, when we produce it to test it out at a later stage, that some modifications must be made to the initial project. In such cases we need to evaluate whether what we want to produce will be part or not of the protection granted with the patent, we must carefully analyse both the “new” item and the text of the filed application. Moreover the claims need to be considered and see what they actually protect: if what is claimed is also taken into consideration in the prototype to be made, then, from this point of view, it is protected; on the other hand, if the prototype has very different characteristics there will be no protection.
Usually it happens that the prototype has the same requisites as in the initial patent application, but it may have, in addition to or alternatively, some secondary improved technical solutions or, in any case, slight differences from the original project. In this instance we can rest assured that we should be protected; however it is advisable to file a new patent application to shield those features not included initially, and which will make the invention commercially more interesting. This kind of evaluation cannot be abstractly done, but only after a concrete comparison between the prototype and the text of the patent application, and must be analyzed by an expert.