PrototypingDisclosureNDAs

Manufacturing a prototype: IP considerations

By Ipiry TeamPublished August 27, 20269 min read

Short answer

Building a prototype means disclosing your invention to people who did not previously know it, and that carries IP consequences. Public disclosure before filing forfeits patent rights in most countries. Disclosure under a proper NDA generally does not, but an NDA does not stop independent development and does not resolve who owns design contributions the shop makes. File first where you can.

Manufacturing a prototype means telling people about your invention who did not previously know it.

That is a disclosure, and disclosure has consequences that most inventors think about after the fact rather than before.

Public disclosure before filing forfeits patent rights in most of the world. There is no grace period outside the US and a handful of jurisdictions.

The fix is straightforward and has to happen first. File, or disclose under a signed NDA, before the quote request rather than after it.

What counts as disclosure

Action	Public disclosure?
Quote request describing the invention	Potentially, without an NDA
Sending drawings to a shop, no NDA	Potentially
Disclosure under a signed NDA	Generally not
Trade show display	Yes
Crowdfunding campaign page	Yes
Published paper or conference talk	Yes
Offer for sale, even one unit	Yes
Internal use within your own company	Generally not

The quote request is the one that catches people. It feels like a preliminary enquiry and it can be a detailed technical disclosure to a party under no obligation.

Offers for sale count without any sale occurring. A single unit offered publicly starts the clock.

Grace periods

Jurisdiction	Grace period
United States	1 year from your own disclosure
Most other countries	None
A few	Narrow, limited circumstances

The US grace period does not travel. Relying on it preserves US rights and destroys foreign ones simultaneously.

Which makes "file before disclosing" the safe rule for anyone who might want protection outside the US. See patent priority date.

What an NDA does and does not do

Does	Does not
Keeps the disclosure confidential	Stop independent development
Preserves the position in no-grace-period countries	Create any right to exclude
Creates a contractual remedy	Survive public disclosure of the information
Binds that counterparty	Bind anyone else
Can allocate IP ownership, if drafted to	Do so automatically

An NDA restrains one party. It does nothing about anyone else who arrives at the same idea independently.

It must be signed before disclosure. Material disclosed before signing is frequently outside its scope, and that is exactly when the technical conversation happens.

Read the shop's standard form rather than assuming it protects you. Many are drafted from the shop's side and are narrower than they look.

Who owns what the shop contributes

Contribution	Ownership
Following your instructions	Not inventorship
Conceiving a claimed feature	Potentially joint inventorship
Manufacturing know-how they already had	Theirs
Improvements conceived during the work	Depends on the agreement
Tooling and fixtures	Usually theirs, unless agreed

Joint inventorship has consequences most inventors do not expect. Absent an agreement, each joint owner can license the whole invention without accounting to the others.

Use present-tense assignment language. "Hereby assigns" operates immediately; "agrees to assign" creates only an obligation. See intellectual property assignment.

A shop engineer who solves a problem for you may be a co-inventor, and correcting inventorship afterwards is harder than addressing it in the agreement.

What the agreement should cover

Provision	Why
Confidentiality, signed before disclosure	The core
Present-tense assignment of any IP arising	Ownership
Restriction on the shop's own use	They work for competitors too
No reverse engineering or retention	Beyond the project
Return or destruction of materials	At project end
Ownership of tooling	Frequently contested
Subcontractor flow-down	Their suppliers see it too
What happens if the project ends	Exit

Subcontractor flow-down is routinely omitted. A shop that outsources part of the work has disclosed your invention to a party your NDA does not reach.

Tooling ownership matters commercially even where IP is settled, because tooling you do not own can lock you into one supplier.

You do not need a prototype to file

Requirement	Detail
Working model	Not required
Enablement	Required — in the specification
Test	Could a skilled person make and use it from your description?
Best mode	The best way you knew at filing

Enablement is a writing requirement, not a building one. You must describe the invention well enough that someone skilled in the field could make it.

Which means filing first is usually possible. Where prototyping is genuinely needed to understand the invention well enough to describe it, an NDA-protected process is the alternative.

Employees and contractors on the project

Party	Ownership without an agreement
Employee, written assignment in place	The employer
Employee, no written assignment	Potentially the employee
Contractor, no written assignment	Frequently the contractor
Shop engineer conceiving a claimed feature	Potentially a joint inventor
Freelance industrial designer	Same risk

Contractor gaps are the most common ownership defect found in diligence. Paying for work does not buy the IP in it.

Get assignments before the work starts, in present tense, covering future output.

The safer sequence

Step	Timing
1. Free prior art search	Before anything
2. Document the invention in writing	Dated
3. File a provisional	Before external disclosure
4. Sign NDAs with any shop	Before technical conversations
5. Prototype and iterate	Within the 12 months
6. File the non-provisional	Before the deadline
7. Public launch, trade shows, crowdfunding	After filing

Step one costs nothing and eliminates most inventions before any prototype money is spent. See patent an idea free.

Step three is the cheap insurance. A provisional at micro entity rates costs about $60 in fees, and the drafting is where the real cost and the real value sit.

Step seven is where foreign rights are most often lost, because launches are planned around commercial readiness rather than filing status.

Worked example: two inventors, same prototype

Both engage the same fabrication shop.

	Inventor A	Inventor B
Prior art search	Skipped	Done first, free
Provisional filed	After the prototype	Before contacting anyone
NDA	Signed after the quote	Signed before any disclosure
Quote request content	Full drawings and description	Redacted, then full under NDA
Shop suggested a design change	Adopted, no agreement	Adopted, assignment in the contract
Crowdfunding launch	Before the non-provisional	After filing

Where each ended up

	Inventor A	Inventor B
US rights	Grace period may apply	Clean
Foreign rights	Forfeited	Preserved
Inventorship	Shop engineer may be a co-inventor	Assigned
Priority date	The non-provisional	The provisional
Prior art in between	Citable	Not citable

Inventor A did nothing unusual. Every step felt like normal product development.

Three separate rights problems accumulated from ordinary decisions taken in the wrong order.

The cost of doing it Inventor B's way was a few hundred dollars and two weeks.

Experimental use

Situation	Effect on the clock
Genuine experimentation	May negate public use
Testing under your control, records kept	Supports the argument
Testing that is really market evaluation	Does not
Public demonstration	Public use
Sale, even for testing	Offer for sale

Experimental use is narrow and fact-dependent. It applies where testing is genuinely necessary to perfect the invention, not where the purpose is gauging demand.

Keep records if you rely on it — what was tested, why, under whose control, and what was learned.

Cost of getting the order wrong

Error	Recoverable?
Disclosed before filing, US only affected	Grace period may save it
Disclosed before filing, foreign rights	No
No NDA with the shop	Depends on circumstances
Shop engineer is an unlisted co-inventor	Correctable, awkwardly
Launched before the non-provisional	May be fine in the US

Only the foreign row is unrecoverable, and it is the one most easily avoided.

Overseas manufacturing

Consideration	Detail
Disclosure analysis	The same
NDA enforceability	Practically harder
Staged disclosure	Reveal only what each stage needs
Splitting work between suppliers	No single party has everything
Local patent coverage	Reaches manufacturing, not just sales
Import rights	A US patent stops import of goods made abroad

A US patent reaches goods at the border even where they were made lawfully elsewhere, which is the practical answer to manufacturing in a country where you hold nothing.

Coverage in the manufacturing jurisdiction is stronger still, because it reaches the supply chain rather than the distribution channel. See patent rights.

What to disclose, and when

Stage	Disclose
Initial enquiry	Capability and materials only — no invention detail
After NDA signed	Full drawings and specification
During the work	As needed for the task
Subcontractors	Only under flow-down obligations
Public launch	After filing

Staged disclosure limits exposure at each step. A shop can quote on capability before it needs to see how the invention works.

This matters most where NDA enforcement is practically difficult, which is the usual position with distant suppliers.

Cost against risk

Step	Cost
Free prior art search	$0
Provisional, micro entity fee	~$60
Provisional drafting	$1,500–$4,000
NDA from a template	Low
Foreign rights, once forfeited	Unrecoverable

The asymmetry is the whole point. Filing first costs a known, modest amount. Disclosing first can cost every foreign market permanently, and no later spending recovers it.

Only 41.4% of US utility patents reach full term anyway — see the patent survival curve — so overspending before knowing the invention is novel is its own risk.

Records to keep

Record	Why
Dated invention description	Evidence of what you had, and when
Signed NDAs, with dates	Before disclosure
What was disclosed, to whom, when	Reconstructing the timeline
Design contributions and who made them	Inventorship
Assignment agreements	Ownership
Testing purpose and results	Experimental use, if relied on

Timelines get reconstructed years later in validity challenges and inventorship disputes. Contemporaneous records are what make that possible.

Manufacturing a prototype: the checklist

Run the free prior art search first. It may end the project cheaply.
File a provisional before contacting any shop, where you can.
Sign the NDA before the technical conversation, not after the quote.
Read the shop's standard NDA. Many are drafted from their side.
Include present-tense assignment of any IP arising from the work.
Require subcontractor flow-down. Their suppliers see it too.
Address tooling ownership explicitly.
Treat design contributions as an inventorship question, not a courtesy.
Do not launch, exhibit or crowdfund before filing if foreign rights matter.
Remember you do not need a prototype to file. Enablement is a writing requirement.

Common questions

Does building a prototype affect my patent rights?

It can. Disclosing the invention to a manufacturer, engineer or fabricator is disclosure, and whether it is public depends on the circumstances. Public disclosure before filing forfeits patent rights in most countries outside the US grace period.

Do I need an NDA with a prototype shop?

Yes, signed before any disclosure. It keeps the disclosure confidential, which is what preserves the position in jurisdictions with no grace period. Many shops have their own standard form, which is worth reading rather than assuming.

What does an NDA not do?

It does not stop independent development, does not create any right to exclude, and does not by itself decide who owns improvements the shop contributes. Those need separate provisions in the agreement.

Who owns design changes the shop suggests?

Whoever conceived them, unless the agreement says otherwise. A shop engineer who conceives a claimed feature may be a joint inventor, which has real consequences since joint owners can each license the whole invention.

Should I file before prototyping?

Where you can afford to, yes. A provisional establishes priority for twelve months and removes most of the disclosure risk. Where prototyping is needed to understand the invention well enough to describe it, an NDA-protected process is the alternative.

Does selling a prototype count as disclosure?

An offer for sale or a public sale can start the clock even for a single unit. In the US the one-year grace period applies, but in most other countries an offer for sale before filing forfeits rights outright.

Does crowdfunding count as public disclosure?

Yes. A public campaign page describing the invention is a publication, which starts the US grace period and forfeits rights in countries without one. File before launching, not afterwards.

Can I show a prototype at a trade show?

Only after filing, if foreign rights matter. Trade show display is public disclosure and is one of the most common ways foreign patent rights are lost, because the intent is promotional rather than technical.

What about overseas manufacturers?

The same disclosure analysis applies, plus practical enforcement questions. NDAs are only as useful as the ability to enforce them, so staged disclosure and splitting work between suppliers are common risk-management practices.

Is a prototype required to file a patent?

No. US patent law requires enablement in the specification rather than a working model. You must describe the invention well enough that a skilled person could make and use it, which is a writing requirement, not a building one.

What should the agreement with a shop cover?

Confidentiality, ownership of any IP arising from the work, assignment of contributions in present tense, restrictions on the shop's own use, return or destruction of materials, and what happens if the project ends.

What is the most common mistake?

Disclosing before filing and before signing anything, because the conversation felt informal. A quote request describing the invention in detail is a disclosure, and by the time an NDA is signed it may be too late.

How to patent an idea

You cannot patent an idea — only a specific implementation. What has to exist before you file, the eight steps from disclosure to grant, what each costs, and the scams to avoid.

Intellectual property agreement types

The main IP agreement types — assignment, licence, NDA, joint development, employment and consulting — what each does, and which one fits the situation you are in.

Patent priority date: what it is and why it matters

What a priority date is, how provisionals and continuations establish it, why it decides what counts as prior art, and how priority claims fail when disclosure is thin.

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