Professor Demchick's Blackboard

Dr. Demchick has been a college and university faculty member for many years. On these Blackboard Pages he does a little teaching. These pages are intended as general, introductory information. Compromises were made between including details in these pages and keeping the pages readable for a general audience. These pages are not intended as legal or other professional advice.

---

REDUCTION TO PRACTICE

There is not a requirement that an inventor actually build an invention before filing a patent application. An invention can be "reduced to practice" in two ways, either one of which is good enough for patenting purposes:

ACTUAL REDUCTION TO PRACTICE which means that the invention is actually built.

CONSTRUCTIVE REDUCTION TO PRACTICE which means that the invention is adequately described in the patent application so that it could be created by someone "of ordinary skill in the art" (i.e., someone in the field of the invention) without "undue experimentation."

Thanks to constructive reduction to practice as long as you know exactly how it would be made, you do not need to actually make it. However, CAUTION should be used. Anyone who has done research in a laboratory, tried fixing something in a car or attempted a home renovation project has probably learned that things are never as simple to do as they seemed like they would be. Even if your basic concept works, it almost always turns out that some tinkering is needed to actually have success. You do not want to file a patent application in which your description does not enable someone in the art to readily make your invention. In most cases, as tempting as it may be to skip the step of actually building the thing, it is safer to not be lazy and actually build it. A patent based on a faulty description is an expensive piece of paper.

It is not necessary that a prototype you build be professional looking, just that it works. For example, often prototypes involve several stock pieces joined together (e.g. glued) even though the several pieces would be replaced by a single custom made part if the invention were being mass produced. Prototypes do not have to be painted to look pretty. The idea is to be certain that your plan actually works. While prototyping please use caution about not going public with the information.

A long time ago, one needed to submit working models to the patent office. That is no longer true.

Ideally, inventors would keep adequate records to prove the date they conceive of their idea and the date they actually reduced it to practice. That proof can be vital if someone else files an application on essentially the same invention near the same time you do. The dates you actually invented are critical because in the United States the inventor with the earliest provable invention date "wins," not the one who filed first. (In most countries, the first to file wins.) However, frequently in my practice the inventor has little or no records. Sometimes, even inventors who tried to establish proof have done so misguidedly (e.g., getting a "post office patent"). Often the earliest provable date would be the filing date of the application (or a few days before based on drafts of applications).