Writing my provisional patent application for my app, I have a question

Question

Ok, so I have decided to write my PPA to protect my idea and I am writing all aspects about this new idea. I started using Google Patents to read some of the non-provisional patents to have some idea on how to write mine. I saw some of the software based patents and now I am confused.

I have a fully developed an iOS app which is an app that uses a technology that I have invented. The app itself is not unique while the technology itself is novel. Though, according to what people say, if my methods (algorithms) coupled together provide the novel technology, I should patent the application itself and not the technology.

I saw some of the patents from some of the large companies like Apple. Some of their technologies that they patented are actually technologies within an application that they implemented or going to implement. I do not get it. Am I missing something?

Lastly, if I go ahead and patent my mobile app with the novel technology that I invented. Will the patent protect both app and the novel technology that I have invented or just the app itself allowing anyone to steal my fully described novel technology\implementation.

Thanks.

Answer 1

At first blush, US 9083821 that you referred to seems to be a very good example of a software patent. I will therefore discuss a little about the patent and how it relates to the invention–implementation dichotomy. I've glossed over the precise details of the invention for simplicity's sake (since it doesn't really matter for illustrative purposes).

What is the difference between an invention and an implementation?

The difference is in the level of generality: an invention is a general solution to a general problem, whereas an implementation is a specific solution to a specific problem*.

So in the case of US 9083821, the specific problem is that users with hearing impairment may not fully enjoy some music when it plays on their device. The specific solution (and how they might intend to put it into practice) is to adapt a music app to vibrate the device in response to the music. Apple could have patented this. However, by limiting themselves to their particular implementation, they would end up with a very narrow protection which would not cover (perhaps a baby monitor for people with hearing difficulty) which uses the same technology but involves a very different implementation.

Thus the drafters would have considered what the general problem is, which is how to convey audio information to a user who cannot hear. The general solution (and the essence of their invention) is to receive an audio signal, convert part of it to haptic feedback, and present the feedback. This covers their specific implementation. But it also covers any other kind of implementation using the same invention. The result is a broad, powerful patent.

How is this reflected in US 9083821?

Primarily this can be seen by considering the scope of the claims. Claim 1 is:

1. A method performed by one or more processes executing on an electronic device, the method comprising:

receiving an audio signal comprising a range of audio frequencies including high frequencies and low frequencies;

converting a first portion of the range of audio frequencies into haptic data representable as haptic feedback comprising at least one of a vibration based on a stored vibration pattern, temperature variation, or electric stimulus to a human user;

shifting a second portion of the range of audio frequencies to a different range of audio frequencies, wherein the second portion corresponds to a range of audio frequencies that a user of the electronic device cannot hear, and the different range of audio frequencies corresponds to a range of audio frequencies that the user can hear; and

presenting the haptic data as haptic feedback so as to convey audible information.

There is very little in this claim related to its actual implementation. The only mention of hardware is in the preamble ("an electronic device"). Moreover, there is no mention that it would be included in a music listening app or that it helps hard-of-hearing people. Instead the claim purely relates to the invention, which is fundamentally just an algorithm.

Claims 15 and 29 do recite some general hardware, but still don't recite a particular implementation.

What about the description

The description is very closely tied to the claims. From reading through the description, you have no knowledge that this will be integrated into a setting for the iOS music app (I assume). While it would be permissible to include these details in the description, there is probably little advantage to doing so. If the general invention is known, the specific implementation will likely be obvious (so wouldn't be useful for amendments anyway). Alternatively, they may have just wanted to keep their competitors guessing.

What should a future drafter do?

Start with your specific problem and solution, which you will likely be familiar with (and which will hopefully be novel and non-obvious). Then consider what how you could your problem and your solution without losing the novelty/non-obviousness. For example, instead of vibrating a device, you might "present haptic feedback". Instead of converting high tones, you might "convert a first portion of the range of audio frequencies". And so on, until you're left with a broad conception of what your invention is.

_{* The terms "problem" and "solution" have a particular meaning in European patent practice, which I don't intend here. I am trying to use them in a more general sense.}

Answer 2

One thing to keep firmly in mind is that you are writing a provisional patent application right now. You are not writing a patent application, at least not yet. These are separate documents and filings with different rules and purposes. You establish a priority date with a good provisional. You cannot say patent pending with a good provisional.

I point this out because you gave an Apple patent application (US20120306631A1) as an example; this is not a provisional. You should be looking at actual provisionals right now as models and not non provisionals (aka patent applications).

A provisional must teach the invention and support the eventual patent application. That's pretty much it and anything over and above this will only work against you.

First, you need to teach fully how your widget works. You do not have to research prior art. You do not need a background section. You do not have to address novelty or obviousness. You don't have to analyze or sell it. You don't have to talk about its advantages. You just have to teach how it works in plain English. In a word, less.

Second, everything in your eventual patent application needs to be supported by the provisional. If you don't do that then if you end up in court and you added some bell+whistle that wasn't in the provisional then you won't get your priority date and then all hell will break loose. In a word, accurate.

A provisional is within your abilities as an engineer. You can do this and no patent-ese is required. An non provisional application with claims is probably not. Claim construction is an art. As an engineer, it's hard to even read claims let alone write them. If you hire Wilson Sonsini to write your patent application they will have you review your claims and you will struggle to read the claims about your own invention.

In any case, you need to really understand what the purpose and rules of a provisional are. I recommend the Stanford iTunes course, Patent Law And Strategy For Innovators. His book, Not So Obvious is also good. It will drag you through everything short of an application. But in particular it will school you in what is necessary for a good provisional and also what you really really really need to leave out. Yep, you can do a lot of damage to yourself by putting unnecessary stuff into your provisional.

https://itunes.apple.com/us/itunes-u/patent-law-strategy-for-innovators/id597710068

Lastly, you can abandon provisionals and start over. It costs you your filing fee. Add some new bell+whistle, add it to the provisional and re-file. The one year clock for the words in that provisional restart. A provisional will only ever be examined if attached to a non provisional application. It won't be published otherwise.