I found a problem in the world, right now this problem is not solved properly(already did patent search, did not found anything similar to it or any product on the market). I know how it can be solved with computer-implemented method. Solution is not implemented yet, it’s just a high level design and I want to protect it with Provisional Application. This solution can both be used as standalone one and be integrated in other existing systems. My system itself consists of several components that collect and store some data and one component that is doing fundamental decision in the system based on collected data(parameters). To make this decision some algorithm should be implemented, this algorithm can be implemented in several ways and right now it’s not clear what is the final implementation and how each parameter would effect the result that system returns, because system was not tested in real life. The question is, would that be critical if Provisional Application would not have detailed description of this algorithm? Say I will give information about close list of parameters that it takes and result that it should return. Also I plan to describe rest of components in details and how they interact with each other, need to say that those components should also be present and are essential part of the solution.
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Afaik that's what provisionals are for, I am just not sure what happens if the algorithm is deemed critical for the invention to be described in a way that it is executable for the person skilled in the art. So whatever answers you get, make sure to knwo the answer to this. If the invention is not suffieciently described you might shoot your own leg.– user18033Jan 13, 2017 at 6:54
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1If you have not tried the actual results of the algorithm implementation, then perhaps you need to verify this first. There is a delicate balance between filling a patent application (or provisional) with few but sufficient data and being too hasty to protect an idea that has not come to reality yet. In the latter case the danger of shooting your own leg, like DonQuiKong said, is a real possibility.– chempatent1981Jan 13, 2017 at 8:14
1 Answer
It's a tough question to answer because it can depend on the particular facts of your invention. The application must describe the invention with enough detail that a software developer with an ordinary level of skill in computer programming could read the application and then build your invention. It's not uncommon for companies/inventors to omit certain algorithms from the patent description, though, for the same reason that developers don't paste their code into the patent application. However, if the algorithm is a key novel feature, then describing it in the provisional is very important. If you envision several possible implementations, an option is to describe all of those as different non-limiting examples. In a similar way, you can describe how the invention can be implemented as a standalone device or can be integrated into a larger system.
If you're unsure whether or not the provisional application describes the invention with sufficient detail, but you don't want to risk losing the filing date, one option is to: file a first provisional with whatever description you're able to put together describing all of the alternatives you envision, then build the device/write & test the code to determine the final implementation, and then file a second provisional application expanding on the first and adding additional detail. It would be important to file the second provisional application before the first provisional application expires. The two provisional applications will have different filing dates, so if you decide to file a nonprovisional application, it will also have to be filed within a year of the first provisional application's filing date, or else you risk your nonprovisional application not receiving the benefit of that first provisional filing date.
These strategies are nuanced and have legal consequences; it becomes important to discuss them with a patent lawyer/patent agent who knows the facts of your case. As one example, a possible outcome is that you describe an implementation in the first provisional application, then file the first provisional application, then test the implementation, and subsequently find that the implementation simply doesn't work. Describing something that doesn't work could have negative consequences on the application as a whole and on whether the description has enabled one of ordinary skill in the art to make the invention. As another example, if you file a first provisional application, and then you start making/using/describing the invention in a public capacity, and then later file a second provisional application, your public activities could destroy the validity of the second provisional application (if you're not careful).
I am no expert, and this response is for informational purposes only and not for the purpose of providing legal advice. You should contact your attorney or legal expert to obtain advice with respect to any particular issue or problem. Laws can differ dramatically from country to country, state to state, and technology field to technology field.
