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We have designed a new soft technique (algorithm) and we want to file it. The USPTO website is very complicated for tracing the correct answers, and it needs professionals like you. We have some basic questions and hopping to hear from you:

Our gross income is less than the maximum limit, and our total patents are less than 4.

Are we eligible to apply for micro-entity?

If we want to publish that technique in conference, but after guarantee receiving a letter from USPTO that indicates the "filing date" (just filing date) .. Can we apply it just as a non-provisional patent or do we need to apply first for provisional patent to have 12 months? As we said, we will not publish it unless getting a confirmed "filing date" letter?

In case we want to file that software-based technique (or algorithm), then which type should we select: design or utility or something else?

Thank you so much

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    Definitely a utility patent, not a design patent.
    – Eric S
    Commented Jun 24, 2017 at 19:27
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    I highly recommend you consult with a patent attorney or agent. Not doing so greatly increases the chances of you losing any patentability or getting a patent which provides little protection.
    – Eric S
    Commented Jun 26, 2017 at 17:24
  • Thank you so much for these great comments. If we say the following: We have everything (algorithms, drawings, results, etc) in our hands, and we can fill all the non-provisional documents, so is it still a necessary to go first with a provisional stream? The main question here is about --> if we file our invention as a non-provisional, then can we directly publish it in a conference or journal once we get the filing date? I think granting the patent or not (which takes a long time) is not related to this subject, because the important part is about the filing date issue. Am I correct?
    – Sitra
    Commented Jun 27, 2017 at 15:10
  • @Sitra are you using an attorney to draft and prepare the provisional? Once it is filed you will receive confirmation from the Patent Office confirming the filing, and you can disclose, although it won't be published by the Patent Office until 18 months after submission. Drafting and filing a non-provisional without using an experienced patent attorney is not recommended. This goes double for software patents, post-Alice.
    – DukeZhou
    Commented Jun 27, 2017 at 16:22
  • See this answer for more detail on why you need an experienced attorney: patents.stackexchange.com/a/13801/16696 You need to absorb what the answer is saying, which boils down to patent law is a specialized, technical field. Self preparing your patent in this era is analogous to performing brain surgery without having gone to medical school.
    – DukeZhou
    Commented Jun 27, 2017 at 18:10

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As @EricShain has advised, an algorithm would be a utility patent.

However, if you are attempting to draft a non-provisional application for an algorithm without expert knowledge of Alice, Enfish, Bascom, and several key cases leading up to Alice, you're asking for trouble and putting the viability of the patent in great peril.

Even with extensive knowledge of these critical precedents regarding software patents you should use an experienced patent attorney who specializes in software patents.

Filing Fees:

For perspective, I was advised to file as a small entity as opposed to micro entity. The reason is that numbers like $130 vs. $65 are both trivial, and improper use of "micro-entity" status can be an avenue for challenge in the future, should you receive a grant. (Even if you fully meet the criteria, it doesn't mean someone won't use it as an avenue of challenge, forcing you to spend money to defend.

I'm not a patent attorney, but my advice is don't push it.

- File as small entity

The money you save filing micro-entity does not outweigh the risk. Apply minimax to your decision-making and weigh the future cost of a challenge against slightly higher fees today.

In terms of provisional/non-provisional, if budget is an issue, go for the provisional first. This gives you a kind of "blanket protection" for a year, and if you don't make a public disclosure, you can always refile a provisional at very low cost.

If you do make a disclosure, the provisional still protects you, but you will have no option but to file the non-provisional at the end of the year.

USPTO publishes non-provisionals about 18 months from the first filing (either the provisional or non-provisionals.) Provisionals without a subsequent non-provisional are discarded and never made public.

Note: Since there is some disagreement on the issue of provisionals, I feel the need to point out that provisional applications were introduced as a low cost route for inventors to gauge viability of a technology, and potentially raise funds, before committing to the expensive process of formally filing. I fear this aspect of the provisional application is all too often overlooked:

"Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States..."
Source: USPTO "Provisional Application for Patent"

While it is always optimal to engage a patent attorney in drafting the provisional, it is not strictly necessary so long as you do your research and are thorough regarding what you include in the provisional.

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    And if any disclosure or other patent arrises during the year after the prov. suddenly you are stuck with a self written provisional to which you cannot add anything anymore and which will never turn into a valuable patent. And if no disclosures are done, you could have waited a year to file with an attorney directly without losses. A provisional doesn't provide blanket protection. It's more like using a self knoted net as a blanket on the Everest.
    – user18033
    Commented Jun 25, 2017 at 22:18
  • @DonQuiKong Excellent comment, with the caveat that the provisional can be extremely broad, and is non-binding. Thus advice for provisionals is usually "include everything you can think of that might be relevant", which would be subsequently pared down and crystallized by an experienced patent attorney for the non-provisional. (I was careful to note specifically that provisionals offer "a kind of 'blanket protection'". There are still risks, but nothing is in stone on a provisional.
    – DukeZhou
    Commented Jun 25, 2017 at 22:24
  • Another advantage of the provisional is it allows you to talk about the technology without ulilizing NDA's, with the caveat that this constitutes disclosure, and a non-provisional must be subsequently filed.
    – DukeZhou
    Commented Jun 25, 2017 at 22:26
  • Not really, many important details lie in the formulations. You can include the best technology in a provisional, if the language isn't on point, no attorney can add it without losing the filing date. So the only parts that have the provisional filing date are the ones you wrote yourself - and those will probably not offer a lot of protection.
    – user18033
    Commented Jun 25, 2017 at 22:32
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    @Sitra a provisional provides the same protection as a provisional concerning publications but both don't protect you against yourself. If you write the application, provisional or non-provisional yourself and afterwards publish your algorithm, the publication will count as prior art against any modification made by you or a patent attorney afterwards. So you are stuck with your version of the application. Forever.
    – user18033
    Commented Jun 27, 2017 at 16:20

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