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I am developing a software application. At the heart of it is a method which I think passes the tests for 'patent-ability' and I am planning to lodge a provisional application just before I launch.

The challenge is though, that like many software projects, there are numerous 'add-ons' that can be built, and many of these would also pass the test for patenting.

When it comes to IP, my priorities are to:

  1. Protect the method at the heart of my software to prevent copy-cats, and
  2. Protect my right to make novel additions in the future

Since I have no money and am reasonably short on time I am looking for the most efficient approach to IP protection. In an ideal world - according to my understanding - I would submit a full patent application for the initial method, and one for each novel addition.

In view of my constraints I am thinking of:

  • Submitting a provisional application for the core method, and
  • Publicly releasing information about future additions, for example in blog posts, presentations, etc

If I do this well, does it achieve my two IP protection priorities? Does it prevent copy cats? And am I free to build the add-ons that I make public early on? Or... is there a better way?

I have considered detailing all the add-ons in my initial provisional application while discussing a method of performing the invention, however it would add quite an overhead to the process so my strong preference is not to.

  • When you say overhead, does this refer to the cost of having attorneys draft the relevant description for your add-ons? – Maca Nov 30 '16 at 7:30
  • Hi Maca, I would say yes, except that I will be writing it myself. – Kim Prince Nov 30 '16 at 20:21
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    While you can save money by doing a significant amount of drafting, not using a patent lawyer is a really bad idea. Good lawyers will help you obtain a useful patent that actually protects your idea. Don't even think of trying to write claims by yourself. – Eric Shain Dec 13 '16 at 22:22
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Protect the method at the heart of my software to prevent copy-cats, and Protect my right to make novel additions in the future

You, and everybody else, have the right to make novel additions. Unless they are still using your patent protected invention to at least the full extend of one of your claims, there is nothing you can do against them using and/or patenting their invention.

Submitting a provisional application for the core method, and Publicly releasing information about future additions, for example in blog posts, presentations, etc

If I do this well, does it achieve my two IP protection priorities? Does it prevent copy cats? And am I free to build the add-ons that I make public early on? Or... is there a better way?

This will achieve two things - it will (if the patent gets granted etc.) protect your "core method" and it will impede everyone including you from patenting anything you publicly disclose after the diclosure.

I have considered detailing all the add-ons in my initial provisional application while discussing a method of performing the invention, however it would add quite an overhead to the process so my strong preference is not to.

This is the best way. Patent protection costs money and time. Taking one of them out of the equation, will reduce the outcome.

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I just went through a similar process on a software patent filing, where there is a core method and a myriad of extensions.

I was advised by numerous attorneys to include not just the core method, but every conceivable extension, in both the provisional and the non-provisional.

The provisional gives you a sort of blanket protection, so you may as well take advantage of that. It's the non-provisional where you will have to restrict the number of claims for a given application, and where the expert advice of an attorney is most important in terms of how you limit those claims to achieve maximum viability for the patent.

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    A provisional application doesn't really provide protection in that it isn't a patent. It does establish a priority date in case you pursue an actual patent and have competition from another patent application. – Eric Shain Jan 5 '17 at 20:10
  • @EricShain Thanks for bringing up that important point. Priority date was definitely a component of the aforementioned advice. The other point regarding "blanket protection" was more about flexibility in terms of deciding what to claim on the actual patent. (i.e. what I ended up claiming was quite different than what I expected, but the provisional was broad enough that the ultimate claims were encompassed.) – DukeZhou Jan 5 '17 at 20:25
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I was in similar situation. My software utility patent application was rejected on "abstract idea" basis. So with the help of my lawyer I made it more specific and submitted continuation. In your case your broadest claim could be rejected but some of narrow claims could be accepted. But then you need to make sure they cover the gist of your invention. Another way keep it secret and have potential clients to sign NDA. When filing my application I have chosen not to publish it, in case if I don't get a patent I still rely on copyright protection.

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