Can I patent this process or workflow?

Question

I was suggested to come here to ask this question- didn't even know this board existed. Hopefully I can get some info here.

Onto the Q:

I'm about to launch a startup that specializes in advertising. The central core of the startup is that it allows everyday people to advertise for cheap. Nothing has been trademarked or patented. I plan to trademark the domain and establish an LLC if it takes off. Those two things are easy. What I'm concerned about is the patent.

Since the business is basically an online service, I'm not sure if I can patent anything. Here's a hypothetical example:

Traditionally, if you wanted to advertise in a magazine, you'd pay a hefty fee to the publisher. Let's say through my service, you pay a monthly fee through my site and get your ads published for a steep discount. Let's assume that there are other companies out there that have done something similar, but just assume they have a very different process of doing it. My process works by doing it as cheaply as possible using a cost-effective approach.

I want to patent this approach, but I'm not sure if it's eligible. I'm pretty sure that although there's companies accomplishing the same goal (getting your ads in the paper), they don't have the same process of doing it. I don't think there's any company out there that practices my approach. It involves simple things like contacting publishers and setting up flat rates instead of negotiating every ad, bulk orders, or monthly flat payment for service, etc.

It's basically a mix of small steps to make one giant process that saves people money. The steps individually aren't really new, but when put together it's non-obvious and new. Can I patent this process? If someone copies the process but makes slight change in one step, would that be infringement?

I have no income from this startup and can't afford a patent. I plan to file a provisional patent with LegalZoom. I'm guessing I just write down the entire process and try to file it as a business method and send it off as a single provisional patent. Hopefully they have some kind of accuracy check to make sure I'm doing it right. Would you advise this?

Answer 1

This is a challenging question due to some recent court cases, in particular the Alice decision (Supreme Court decision) (Wikipedia Article). Both of these are highly recommended reading prior to writing a new application in this space, because the Alice decision created a new legal test for patentability for business methods, based on a test of abstraction.

Although the Alice opinion did not mention software as such, the case was widely considered as a decision on software patents or patents on software for business methods. It and the 2010 Supreme Court decision in Bilski v. Kappos, another case involving software for a business method (which also did not opine on software as such), were the first Supreme Court cases on the patent eligibility of software–related inventions since the Diamond v. Diehr in 1981.

It is currently really tricky to write a specification and claims that will fly in this space. If you decide to do this on your own, try to find some post-Alice applications in your space (filed after June 19, 2014) and read through the non-final and final rejections of those applications in the USPTO Public Pair database. If you can find a recent patent in the space that actually issued as a grant, then you should use it as a model for how to construct your claims and write your specification.

The provisional application will not be publicly available unless and until a non-provisional claiming priority to it is published, but you need to make certain that you stake out the entire territory of what you might potentially claim. Provide relevant citations and definitions, and don't skimp on the content. This will give you a full year to complete and file your application, and during that time you should be sure to stay up to date on new developments on business method patents. If, by a few months before the application is due to be filed, you can afford to hire a patent agent to review and file your application, please do. It won't hurt to shop around for such an agent in the meantime.

Answer 2

Most importantly, DO NOT file a patent application with LegalZoom, especially when it comes to this type of technology.

The problem with these LegalZoom patent services is that they lure inventors into believing that they can get solid patent protection for cheap. In fact, the sad reality is that patent applications drafted this way offer effectively no patent protection and have little chance of withstanding the examination process. Plus, the nature of the patent system makes it such that inventors won’t know this until it’s too late and their patent rights are irrevocably lost.

The following blog post discusses the perils of LegalZoom in great detail: http://www.patentsdemystified.com/is-it-safe-to-use-legalzoom-to-file-a-patent-application/

It would be best to talk with a patent attorney about this before doing anything. Typically, you can find one who will give you a free consultation.