Provisional patents for software

Question

I am trying to submit my first provisional patent in the UK but I keep getting confused about what sort of information I should put in at this stage. I know I should put as much information as I can, but I'm not sure how much is enough for now. Lets say I have made an iPhone app that communicates with the fridge. Obviously there should be a hardware in the fridge that connects to the fridge and theres some software that tells the hardware how to act. For example, lets say the iPhone app is able to turn the fridge's lamp on and off.

In this case do, I have to submit 2 provisional patents? One for the iPhone app and one for the fridge's hardware?

To what extent should I draw the hardware in the fridge? (Btw I am not making anything even close to fridges)

I thought that a provisional patent will allow me to disclose my idea to my potential customers and to get feedback from them. What if I receive feedback and I want to improve my hardware or software again? What happens to the provisional patent?

Basically, I have an idea that seems patentable. The idea itself requires a hardware with a custom made software on it and an iPhone app. I still don't have a final design for my hardware but the hardware itself is functional and I managed to take a video of myself showing how the hardware works. My plan is to 1. patent my idea. 2. disclose my products to my potential customers, show them the video of how the device works, and improve my product if there's something missing. 3. After I receive interest from my customers, I ask them for a letter of intent so that I know what to expect for year one. 4. look for investors to raise funding in order to hire more help to complete the final stage of the product and to manufacture the hardware.

I've seen some websites that say that I should even include all my code in the provisional patent as well as all the drawings, algorithms, drawings and... What if I want to update the code after I submitted my provisional? I've also seen some other websites that say a provisional can be submitted in 20 min just by just explaining the idea and the general concept of it and the designs can don't have to be that serious. They even say that there is no need for a lawyer for a provisional. I really don't know which one to believe and I don't want to make a fool out of myself when a customer sees my provisional patent. Does anyone have any similar experience in the field of IoT? Am I missing something here?

Thanks in advance!

Answer 1

How much information should be in a provisional patent application?

Your provisional application should explain the invention in sufficient detail that a skilled person, reading your application, could put it into practice.

A provisional patent application has no formal requirements, so strictly does not need to include claims or drawings. However, if you omit either of these, you run the risk of the provisional not fully supporting the invention. In such a case, your later non-provisional application may not be entitled to the date of filing of the provisional, and therefore may end up being unpatentable.

For this reason, a provisional patent application should typically be the same as a non-provisional patent application. Notably, it should include a description, claims, and drawings.

Should a provisional patent application include source code?

I shouldn't think so.

Source code shows one possible implementation of the invention (that is, one particular arrangement of code in a particular language). However, you are not looking to protect one implementation: you are looking to protect the invention itself. It would therefore be quite rare for an application to include source code.

However, it is common (and maybe even essential) to include pseudo-code or a flow chart showing the high-level steps of your method. These are provided at the level that a skilled person (such as a computer programmer) could understand and implement with a reasonable amount of effort. So a step of "sending a notification from a first terminal to a second terminal over a network" is quite acceptable in most cases, as the skilled person would understand how to put this into practice.

To what extent should I describe the hardware for a software invention?

To the extent that a skilled person, reading the application, could put the invention into practice. If the hardware is commonplace, and effectively a general purpose computer, it is typically sufficient to make a note that the method can be performed by a computer having a processor which executes instructions. However, if the software invention requires specialised hardware, you would need to provide more description.

Would I submit two provisionals: one for the hardware and one for the software?

Not usually. If each truly stands alone as a separate invention, and are novel and non-obvious on their own merits, then two separate applications could be prudent. However, if there is some synergy, or if one part is not really novel without the other, it would be typical to have them in the same application.

What if I have improvements?

When you file a provisional, you have 1 year to file a non-provisional. You can include improvements in the non-provisional that you've developed over that 1 year. The improvements have a later priority date than the parts described in the provisional, but that is usually not a problem.

Do I need an attorney for a provisional?

Definitely.

There are no formality requirements for a provisional application, so you could file a provisional with a napkin sketch and a couple of sentences. This would be a valid provisional application.

However, this would provide you no benefit whatsoever. A later non-provisional would not be entitled to the earlier date of the provisional, as the provisional does not describe the invention in sufficient detail. It would be as if the provisional was never filed.

In other words, a useful provisional application cannot be prepared in 20 minutes, and cannot be prepared yourself. You need a capable attorney to prepare it. It will certainly take time and money, but the alternative is going without protection.