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I have an Invention ... Now What?
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   Do I need a prototype
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   Author  Topic: Do I need a prototype  (Read 1752 times)
RMissimer
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Re: Do I need a prototype
« Reply #5 on: Jun 1st, 2006, 7:39pm »
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The need for a prototype is driven by the Examiner.  It is, as stated above, dependant on how believable an invention is, but completely up to the examiner to demand.
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RS Missimer
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JimIvey
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Re: Do I need a prototype
« Reply #6 on: Jun 1st, 2006, 10:02pm »
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on May 31st, 2006, 7:48am, Wolfcastle wrote:
Applications for perpetual motion machines require a working prototype. Cold fussion devices may be in that catagory as well.

Everybody always leaves out time travel machines.  I think you'd need a working prototype for that, too.  However, having a working prototype would wreak havoc on Section 102 (with "before" and "after" no longer being fixed and immutable).
 
Although, I suppose you have to draw the line somewhere.  The list could just get too long with things like alien body-snatcher detectors, devices for preventing telephone calls from the dead, ghost traps, etc.
 
Regards.
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Isaac
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Re: Do I need a prototype
« Reply #7 on: Jun 2nd, 2006, 2:36am »
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There is a patent describing a faster than light communication device that works by creating a field flux to access another universe in which the laws of physics are different.
 
The patent also alleges that the radiation created by the process enhances plant growth and includes some testimonials as to that effect. I suspect that the allegation of the second effect and the included evidence was used to avoid the 35 USC 101 and associated 112 issues.
 
So if you want to patent a perpetual motion machine, perhaps one technique for doing so would be to allege an additional mundane but useful side effect that does not trigger the request for a prototype.
« Last Edit: Jun 2nd, 2006, 5:27am by Isaac » IP Logged

Isaac
Bill Richards
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Re: Do I need a prototype
« Reply #8 on: Jun 2nd, 2006, 7:55am »
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Actual reduction to practice (a prototype) is sometimes required in bio and chemical cases.  This from the law of inventorship.  The others are correct and the rule is the level of uncertainty with the invention.  For example, it has been found there was no "definite and permanent idea of the complete and operative invention" where the putative inventor was unable to envision the detailed constitution of a gene until it was actually obtained and characterized.  In a chemical case, it was noted that success is not assumed until the inventor is able to envision the detailed chemical structure so as to distinguish it from other materials as well as a method for obtaining it.
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Isaac
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Re: Do I need a prototype
« Reply #9 on: Jun 2nd, 2006, 9:06am »
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I think at least some of the discussion distinguishes between a requirement for actual reduction to practice and being required to provide or demonstrate a prototype to the patent office.  I think in some biotech cases, a deposit of some kind is required to satisfy the written description requirement.    In those chemistry cases, I think the inventor just has to provide data.
 
But outside of that, I think prototypes are only required for a few well known situations.
 
A coworker referred me to patent application US 2006/0014124  titled "Walking Through Walls Training System."   The description talks about walking in a pattern that allows accumulation of hyperspatial energy, but what is claimed is a device for providing feedback to a user to inform the user concerning deviations from the desired pattern.   At least in theory it would not be necessary to demonstrate walking through walls to overcome a 101/112 usefullness/enablement rejection.  Even a religious belief in hyperspatial energy might be enough to make walking the pattern a useful outcome.  
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