Prototype testing: avoiding the risk of accidental disclosure

The benefits of testing prototypes for a new invention are easy to understand, as a few hours experimentation with a prototype can prove more useful than hundreds of hours of analysis. Indeed, James Dyson has gone on the record to talk of the benefits of prototypes, stating that over 5000 prototypes were involved in developing the bagless vacuum cleaner, for which he is known.

Prototypes therefore clearly have an important role to play in developing an invention, but it is worth spending a moment to consider whether they may have any downsides.

The simple answer is that although the prototype itself doesn’t have any particular downside, the circumstances in which it is manufactured, tested, stored and/or transported are important. In a worst-case scenario, if any one of these is done incorrectly, it may not be possible to obtain patent protection and/or a previously granted patent protection may be revoked. This is because a key requirement for obtaining a granted patent is that it the subject matter of the patent has not been publicly disclosed (“made available to the public”) before the patent application is filed. What is done with a prototype is a potential source of disclosure.

Prototype testing therefore presents a conundrum, as it is beneficial to conduct testing before a patent application is filed to refine ideas, but in doing so, there is a risk that the idea is publicly disclosed, making it impossible to obtain patent protection. The same is equally true if the prototype is manufactured by a third party, and it is unclear that the idea has been disclosed in confidence to them by the inventor or the prototype has been transported on public roads without a cover.

Concerning disclosure, the legal test is “made available to the public”, and not “the public availed themselves”. This is because, for largely pragmatic reasons, the legal test does not consider who saw what, or what that specific observer may have understood, but rather, considers what a skilled person would have understood if they had able to make an observation.

As Mr Claydon in Claydon v Mzuri [2021] unfortunately found out, this means that an idea can be “made available to the public” during prototype testing even if it is acknowledged by all involved that no-one actually observed the testing. It should therefore always be remembered that disclosure is considered relative to a “hypothetical skilled person”, and not an actual person.

This may seem harsh – and indeed, the Judge had sympathy for Mr Claydon when delivering the judgement – but does this mean that prototype testing is now impossible?

The short answer is “no” – but that care needs to be taken. The degree of care will be dependent upon the nature of the invention, with Mr Claydon at a disadvantage because his invention related to large farm machinery, which was judged to be both difficult to hide, and easy to observe, making disclosure more likely.

The risk of accidental disclosure is therefore very case specific. As a disclosure, once made, cannot be unmade, we would recommend that if you have any particular concerns about the risk of potential disclosure, you contact us to discuss your plans before starting testing.

We would however, offer a few general points: -

• If using a third party to assist with manufacturing or testing your prototypes, ensure that a signed non-disclosure agreement in in place with the third party before disclosing your ideas. We can help you with this.
• When determining where to conduct prototype testing, consider what could be seen by a person from a public space. Bear in mind that just because the testing may be on private property, if the testing is close to a public road or right of way (like Mr Claydon), there is a risk of disclosure. For safety’s sake, also consider what could be observed if the testing is conducted within a room of a building, if the building is adjacent to a public road. Where possible, move the test site away from public view and / or use screens.
• When moving or storing the prototype, make sure that the invention is covered. This includes visits to your patent attorney!
• Prior to conducting any tests, document what precautions have been made to prevent accidental disclosure. This may prove useful at a future point.

A final point - remember also that the potential observations of the hypothetical skilled person are only considered based on what they can do legally (no trespassing!), using either their own senses or equipment that they could reasonably be expected to have with them (for example a camera phone). The hypothetical skilled person is not Jason Bourne or James Bond. Prototype testing remains possible, provided care is taken & the risk of disclosure is considered.