Building a Model of Your Invention
After conception of your idea, it is often desirable to develop a prototype. It is of the utmost importance, however, to remember to record your conception first and preferably have such recordation attested to by one or two witnesses (see the Invention Record form). Once this simple but crucial step is complete, it is then time to consider developing a working model of your invention.
The reasons for developing a working model are several. First and foremost, a working model will help you determine whether your invention is capable of actually performing as expected. In addition, testing the model might suggest further improvements or uses that would be worthy of including in a patent application should you eventually decide to file one.
Furthermore, a working model provides you with the ability to evaluate the positive and negative commercial aspects of your invention, including manufacturing costs, appearance, possible packaging, options, reliability, repairability, etc.
Finally, a working model will give you something tangible to show to potential venture capitalists and other investors who might be interested in licensing or purchasing your invention. However, you must always beware of the “One Year Rule” which states that publicly demonstrating your invention begins a one year period during which you must file a patent application.
Often it is possible to build your invention yourself, especially when your invention is somewhat straight-forward. If you have the ability to construct a model yourself, keep notes of the methods and procedures you used in its construction, and sign and date your notes every day. Upon completing construction of the model, it would be a good idea to record its construction just as you did its initial conception, with an “invention record form” having your signature as well as that of one or two credible witnesses.
In the event that you are unable to construct a working model of your invention yourself, you will need to contact a model maker or engineer who will do it for a fee. Feel free to ask them for references, so that you may evaluate their competence and integrity.
Before turning over any information to your model builder or engineer, be sure to have him or her sign a work agreement or contract which specifies the exact type of work to be performed (e.g. full scale working model), the exact rate and method of payment agreed upon (e.g. a deposit of $150 prior to commencement and a balance of $250 due upon satisfactory completion, payable in cash or by personal check), and the exact time schedule agreed upon (e.g. work to be complete within 30 days). In addition include in the contract that all information about your invention is to be kept strictly confidential.
Equally important as the above provisions is the necessity to insert some type of clause in the work agreement/contract prohibiting the model builder or engineer from improving or varying your invention, and attempting to claim it as his or her own. Although this rarely occurs, it requires almost no effort to insert this clause in the work agreement and thus avoid any conflicts or misunderstandings (as well as possible costly litigation) in the future. Included below is a sample clause which you should feel free to copy and insert in any work agreements or contracts you might engage in to have your invention developed into a model:
INTELLECTUAL PROPERTY: Any and all intellectual property conceived by (insert your model builder’s name here) which in any way derives from the services provided for in this contrast shall become the sole and exclusive property of (insert your name here), regardless of whether such intellectual property is conceived during the time devoted to the services under this contract or not.
Furthermore, because under US Patent Law (35 USC 115), all patent applications must be applied for in the name of the “actual” inventor(s) is it necessary to secure a promise from the builder that should he in fact conceive of any changes or improvements to your invention he will agree to be named as an inventor in such application, cooperate in the filing of such application, and assign to you all his rights as a co-inventor. Below is a sample clause which you should again feel free to copy and insert in any contract you enter into with a model builder.
ASSIGNMENT OF RIGHTS: In the event that (insert your model builder’s name here) conceives of any improvements or variations relating in any way to the subject matter of this contract, no matter how subtle such variations or improvements may be, actual ownership of such improvements or variations shall belong to (insert your name here). Furthermore, (insert your model builder’s name here) hereby ASSIGNS ALL RIGHTS to such intellectual property, and agrees to cooperate fully without charge, in assisting (insert your name here) by signing any and all documents relating to any applications for US or foreign patents in connection with such conceptions.
Upon the completion of your model by a model builder, you should record its existence as well as its operability by again signing and dating another Invention Record form as well as having one or two witnesses do the same. With your working model in hand, you are now on your way to assessing your invention’s patentability, as well as its potential commercial success.
