Q: When and why did the Patent Office stop requiring prototypes to be built before patents can be issued?
A: Your question is an interesting one that touches not only on current USPTO procedure, but one that also takes us back into the rich and vibrant history of our U.S. patent system.
As early as the first patent statute of April 1790, there was a requirement that the applicant for a patent provide a written description of the invention and an exact model of the invention, if the nature of the invention would allow a model. This requirement continued for nearly 100 years, during which time the USPTO (then called the "Patent Office") collected hundreds of thousands of models. The collection of models reflected the variety and profusion of American invention and became seen as a tourist attraction in Washington, D.C.
With time, the Patent Office phased out the model requirement. The expense of maintaining the models had become overwhelming and in the early 1870's, the Patent Office began printing and distributing copies of all new patents as they were granted and all patents already in the files. These paper patent copies became the new primary source of patent information.
Today, some of these treasures of innovation still exist at the USPTO, in public and private museums and with individual collectors. Additionally, present day inventors
can submit a model if it is necessary to demonstrate the patentability of the invention or if specifically required by the USPTO. If the applicant finds it necessary to submit a model or the USPTO requests one, the model must comply with 37 CFR 1.91, (Rule 1.91), which can be viewed, along with all patent rules, on the USPTO Web site, www.USPTO.gov.
Generally, photographs that show multiple views of the material feature(s) of the model must accompany the model and the applicant must make arrangements for the return (from the USPTO) of the model and subsequently, retain the model for the enforceable life of any patent resulting from the application.
Videotapes, DVDs or CDs that contain demonstrations or depiction of an invention are treated somewhat similarly to models. Use of these "exhibits," as they are termed, is also governed by 37 CFR 1.91 and 1.94. They, too, should onlybe submitted if it is necessary to demonstrate the patentability of the invention or if specifically required by the USPTO. On a related note, I encourage inventors to consider scheduling an interview with the patent examiner assigned to their application. This interview can be held prior to a first office action or during prosecution of the application. An interview is often a great way inventors can best communicate the intricacies of inventions to patent examiners. In-person or phone interviews are both an option and can help to expedite an application or clarify pending issues in an application.
U.S. Patent and Trademark Office commissioners field questions from Inventors Digest readers. Got a query? Drop them a line at AskUs@inventorsdigest.com, or write:
Ask the Commish
P.O. Box 3761
Charlotte, NC 28236.
