Industry Forum

INDUSTRY FORUM DESIGN EDGE

Matt Nuccio offers his hard-learned tips on patenting, and how to avoid common pitfalls in every step of the process.

THE DESIGNER’S PERSPECTIVE 3 Things to do Before Patenting

by Matthew Nuccio

One thing I’ve learned many times over is that not all patents have immediate value. In fact, based on my experience, I would even argue that most patents have no value. That being said, I realize that a seemingly useless patent of today could change the world of tomorrow. Products like the 3D printer (patented in 1986) and the digital camera (patented in 1975) were both decades ahead of their time. While many of my clients dream that their concept is the next great thing, more often than not, I am presented with patented concepts that look and sound awesome “on paper”, but end up not translating well into physical form. There are many reasons why this will happen, with the most common problem being the inventor’s overeagerness, going straight to patent without making sure to solve any potential design issues in physical form. Can that be fixed? Very often that is a resounding “YES!”, but it can also be quite costly. So...how exactly does that happen? Well, in life I’ve noticed that surgeons like to cut, dentists like drill, mechanics like to tinker, and patent attorneys like to patent. If you go to your patent attorney as the first step, you may be very well skipping some vital and essential steps, unknowingly. Here are 3 things to consider doing before filing for your patent:

· Proof of Concept Prototype

In my 7th grade science class, I learned that a hypothesis is technically “an assumption for the sake of argument”. In the scientific method, a hypothesis is created before any applicable experiments have been done. So what’s the inventor’s experiment? Prototypes. One must definitively prove that their concept is valid and workable through a process of making one prototype after another. Working out any “bugs” and testing and tackling any physical or technical issues that arise in the process is key. So, lock yourself in the basement with stacks of toilet paper rolls, duct tape, rubber bands, glue and whatever it takes to prove that your hypothesis can properly manifest in the physical world. It doesn’t need to look great. At least, not yet. In this early stage, it just needs to work! Once you have it working, you can call up your attorney or visit the USPTO site and file your provisional patent application. That will buy you 12 months to iron out any other issues before you file for patent.

· Design for Costing

So now you have your Frankenstein’d proof-of-concept model, and you’ve filed for your provisional patent. Sure, it’s a real eyesore, but so what? It does what it needs to do. Is it ready to patent? Technically yes, but if you’re working with shallow pockets, you can lower the possibility of adding extra zeros to your attorney’s bill by making sure that your prototype not only does what it needs to do, but also can be replicated and produced for the best possible price. If you don’t streamline your idea now, it may cost a fortune to amend your patent down the road. Often, when developing a product for mass production, we need to change processes, materials, sizes, and mechanisms just to be able to have it produced. In addition, the good news is that generally, we can discover ways to greatly improve the product during this phase, and those improvements will be vital to your patent. The more claims you site on your patent application, the better your chances of getting a patent. If you wait until after your patent is issued, you may find yourself spending big bucks amending your patent, or worse, becoming trapped by the now-limiting ways your patent has been written.

· Prototype Again

Now that you have your concept streamlined, it is time to build a proper prototype that both resembles and functions like the real deal. If all of your improvements on paper translate well into physical form by the time your provisional patent application matures, you are golden! Not only will you have a solid patent, but you will have a product that looks great and functions great, without any costly issues. It will be ideal for any potential licensee to license, or fantastic for a potential entrepreneurial venture.

Matt Nuccio is president of Design Edge, a New York-based toy and game development company. For more information, he can be reached at matt@designedge.net.