provisional patent and source code and/or video


1

I would really appreciate if anyone could help me answer the following. I am currently at MIT and attempting to submit a complete provisional application for a SaaS service I am about to launch. Creating a "complete" provisional application is VERY time consuming when one considers all the GUIs, algorithms, DB schema, sharding levels, etc.

The software we are patenting has already been built, and the algorithms developed are new and non-obvious.

  1. Has anyone submitted their provisional application with the source code of their technology (segments or complete set) instead of logical flow charts? Does submitting source code and referencing it in a provisional application make the disclosure complete and full?
  2. Has anyone submitted their provisional with a video on a CD-ROM? I know CD-ROMs are accepted by the PTO. Since our product is finished, it should be trivial to make a video by capturing a screen (ala camstudio.org) and save it on a DVD or CD-ROM.

I figure (2) is safer since I understand that if source code is included in the provisional application one also needs to submit it in the actual application.

Any thoughts or details would be appreciated. If anyone has personal knowledge they would not like to make public feel free to email me at omid [at] mit [dot] edu

Thank you all!

Saas Code Provisional Patent

asked Jun 20 '12 at 03:15
Blank
Somid3
195 points

2 Answers


2

So after spending a day researching this topic and talking with a patent attorney -- here are my findings. However, these findings are not part of any legal advise, they dont create a client relationship, and you have to use it at your own risk -- aka: don't sue me in the future.

If secrecy of an algorithm is NOT an issue:

  • Including source code or pseudo code does not harm your application. Actually it is what some say an "unassailable" proof of the invention -- since it is the invention itself. Note that you would have to also copyright the code. But this can be done after the application has been turned in.
  • Making a video of the software working, while explaining the inner workings and showing the source code, underlying database and functionality, does not harm your provisional application either. Actual patent applications need to be in written form! However, for a provisional patent application, since you are only trying to prove that your invention existed on X date, then a video does no harm. If you only include a video then you need to somehow prove that the video is using the invention you created. Consequently it might be better to do a combo of source code plus video. This suggestion is extremely experimental, there is no (?) case where source code has been used to defend a provisional, let alone a video.
  • Note that a provisional patent is really intended for you to prove that you came up with the idea/invention/whatever on X date, it is not to get a real patent. As such, do anything possible to demonstrate the technicalities of your invention, its functionality, advantages, etc.
  • IMPORTANT! Now, one year down the line when you apply for a patent, you need to make sure that the examiner gives you the broadest claim you can get your hands on. As such, when you write your provisional patent -- it does no harm if you DO include a "Claims" section, and with some legal advice write 1 or 2 really broad claims. Doing so will show that not only you came up with the invention, but that in doing so you had the full grasp of the invention, and knew of all its potential uses, applications, etc.
  • Most people advise provisional patent applications to not include a "Claims" section simply because most inventors write very specific claims, however, it does not hurt you to write 1 or 2 very broad claims.

Again, all these statements are made up, they are not intended to be used as legal advise. They are just random thoughts. Consult your council.

For any future entrepreneur, I hope this helps.

answered Jun 20 '12 at 06:07
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Somid3
195 points

1

I figure (2) is safer since I understand that if source code is
included in the provisional application one also needs to submit it in
the actual application.

Hi Omid, your assumption is correct. To follow through the provisional patent that is based on source code with a non-provisional patent application, you will need to submit the source code which would become public if the patent is granted. That said, there is a lot of time between the moment you submit the source code for the non-provisional and the actual grant, and that affords you other ways to deal with protecting your ip.

Based on the information from the source below, it appears a video on cd-rom would not provide sufficient patent protection.

As for logical flow charts, even if someone here @ onstartups has submitted it for their own patent application, it wouldn't mean they actually have adequate protection if the patent were challenged in litigation. I would recommend consulting an IP lawyer with experience studying case law in this field to help you determine whether flow charts are sufficient in lieu of the source code. I would personally recommend consulting Jeff Schox.

Here's some information that might be helpful to you from http://lahserpatent.com/software-patent/ :

Two Reasons to Avoid Informal Software Patent Applications


There are two primary disadvantages to using source code as an
informal software patent. First, your initial source code will later
become publicly available when the Patent Office finally grants the
software patent. Usually, this does not happen for many years while
the patent examination process continues. During these years, software
development also continues. The initial source code becomes less
valuable as bugs are fixed, user interface is refined, and functions
improved.


Even later, if secrecy becomes important, the patent
application may be expressly abandoned. Abandonment ensure that the
the source code does not become public by publication at the US Patent
Office. Finally, filing a copyright application can directly protect
the source code even after the publication by the US Patent Office.


Second, courts require all applications (formal and informal) to fully
disclosure the software invention. If not, they will fail to meet the
legal requirements of a patent grant. So, even though the Patent
Office will not review an informal application, the application must
fully disclose the invention. Since the source code is the blueprint
of the software, it seems very likely that the disclosure is full and
complete.


Still, no lawsuit has tried the underlying legal theory of
writing a patent application using primarily the source code of a
patent. However, common sense will tell you that the source code IS
the invention, and, therefore, a full and complete disclosure of the
invention must be made when including the entire source code.

answered Jun 20 '12 at 03:34
Blank
Henry The Hengineer
4,316 points
  • Hello Henry, thanks for your feedback. Could you let me know where you read that submitting a video would not provide sufficient protection. I imagine a video that goes through the user interface, explains algorithms and information flows as they take place, shows the database schema, etc. Thanks! – Somid3 8 years ago
  • Also, I think the stagnant 3-year old source code is OK if it becomes public once/if a patent is granted. Secrecy is not a problem, I just wanted to make sure source code is considered full disclosure of the invention. Thanks again! – Somid3 8 years ago
  • My conclusion (which may be wrong since I am not a lawyer) about the video comes from this statement: "Second, courts require all applications (formal and informal) to fully disclosure the software invention. If not, they will fail to meet the legal requirements of a patent grant. So, even though the Patent Office will not review an informal application, the application must fully disclose the invention. Since the source code is the blueprint of the software, it seems very likely that the disclosure is full and complete." – Henry The Hengineer 8 years ago
  • From Defend Innovation: "I'm a co-inventor on 7 patents, and know a bit about how silly software patents are. Most of them do not protect innovation. When it takes 10x longer to do the patent paperwork than to come up with the invention in the first place, how innovative is the thing you are patenting anyway?" Join the movement to get software patents out of the way of innovation: https://defendinnovation.org/Henry The Hengineer 8 years ago
  • Henry, if secrecy is not a problem, wouldn't doing a write up take 1-2 days + source code make the whole process very simple? Or including a video? – Somid3 8 years ago
  • for the provisional, yes. for the non-provisional , the claims section might take additional time (and adding patent citations would increase the chances of it getting granted) – Henry The Hengineer 8 years ago

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