Natick, MA asked in Patents (Intellectual Property) for Massachusetts

Q: Patents - Utility - regarding sophistication required of preferred embodiment to justify provisional protection.

For the sake of business expediency, is it OK to 'cobble' together a less-than-desirable solution and use that as proof of concept, and then write the claims off of that? The go-to-market solution would require a better mousetrap but it would get the patent part going. So would the utility claims of what this accomplishes keep out the better mousetraps? (I appreciate this is a broad, theoretical question and specifics need evaluation by an atty.) Hoping this would bring the product status to a 'realistic' provisional patent providing minimum 'enough' protection to be able to approach potential partners or investors needed to develop the 'better mousetrap'.

1 Lawyer Answer
Peter D. Mlynek
Peter D. Mlynek
  • Patents Lawyer
  • Moorestown, NJ

A: This is a very question frequent question in R&D. It rare that a company has a project, comes up with a product that is optimized. Normally, researchers come up with a viable product, which is then refined to make the product better, and which can be sold.

The answer is, yes, an invention that is less than optimal is patentable. You want to be able to stake out the ground as early as possible.

However, you need to be cautious. It is important that the product, composition, or method that you have invented is finished. You cannot get a patent on something that is just 50% or 80% finished; you can't claim "a product comprising (a), (b), (c), and something else that we'll figure out later." In other words, you must have finished inventing the invention, i.e., you must have a well-defined invention that is fixed in your mind.

Also, you need to make sure that you disclose the best embodiment to your knowledge at the time of the filing, even if you know that there may better embodiments if you were to spend some more time on it.

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