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Ok, so suppose I have an iOS patentable application. The app consists of two components let us name them Com1 and Com2. Com1 is simply a normal means of input that takes input from the user of the app and stores it. Com2 is a main part of invention that takes the data from Com1 and does something novel and unique with it.

If Com1 is non-novel while Com2 is novel. How to deal with this in terms of aspects and claims. Should I say mention them in detailed description as two different aspects. Com2 cannot function without the output data from Com1. Though, get this the user can use pen and paper to write the data required for Com2 skipping Com1 completely. So, in my claims if I write the steps from both Com1 and Com2 and the user would maliciously use pen and paper to non infringe my claims (for example).

How can I protect my invention from being stolen in terms of the aspect and claims. I am thinking I should mention both Com1 and Com2 in the invention while writing only Com2 in claims or I could mention Com2 as independent claim and Com1+Com2 as another independent claim preventing anyone from doing Com2 claim steps or Com1+Com2 claims. Is this the write way to do it? And if that is the write way to do it, how do I mention Com1+Com2 as aspects of invention.

P.S. I would like to thank the friendly community for answering all my questions especially Maca and DonQuiKong. I am asking a lot of questions because I want to learn as much as I can about patents without having much money to pay for a lawyer to make them for me. I have multiple software inventions that I want to patent.

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    Patent law with respect to software is extremely complex. With all due respect, attempting to write and process your own patent without the use of an experienced patent attorney is likely to end up with either no patent at all or else a weak and fairly useless one. – Eric Shain Feb 28 '17 at 15:35
  • @Eric Shain, I do not have enough money to hire a lawyer to help me. I am making those patents in hopes that I sell them to get enough money to keep myself alive since my life literally depends on those. Thanks for the advice, though. – Rick James Mar 1 '17 at 6:39
  • Classically folk in your position try to raise venture money. You should anticipate that whatever you submit will be rejected. This is the normal first step in prosecuting a patent. Without a lawyer to maneuver through this process, likelihood of success is low in my opinion. – Eric Shain Mar 1 '17 at 9:35
  • @Eric Shain, I really appreciate you taking taking time to reply to my query. By the way, did I mention I am making a provisional patent only. I am not talking about a non-provisional patent. I know one cannot do the non-provisional patent without a lawyer for a fact. I am hoping in this one year I could get someone to actually buy/invest in the projects. If that does not happen, then at least I did my best. I am not about to ask people for charity. – Rick James Mar 1 '17 at 10:49
  • That makes more sense. Claims aren't really important for a provisional so don't sweat those. – Eric Shain Mar 1 '17 at 15:38
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So here we have a tidy distinction between description and claims.

Description

You must provide a description sufficiently detailed that the skilled person, reading your description, would understand how to put the invention into practice. You must also disclose the best way of doing it that you know. To this end, it is irrelevant whether the different parts are novel or not.

In your case, it sounds like COM1 is an important part of the overall system (even if it's not novel, and even if it could be inefficiently substituted with pen and paper). It must therefore be disclosed in your description. However, it is not an aspect of your invention itself (since you didn't invent it).

Figure X shows the system 10. input device 11 passes data to processing device 12. Processor 12 may comprise COM2. COM2 is configured to …

In some embodiments, input device 11 comprises COM1. An example of COM1 is shown in Figure Y. …

Claims

In your claims, you generally only include features which either (1) contribute towards novelty and non-obviousness; or (2) are essential to understand the invention in context.

In your case, it sounds like COM2 is the novel/non-obvious bit, but it's essential that something provides an input. So you might have an independent claim:

  1. A system comprising: an input device, and COM2, wherein COM2 is in communication with the input device.

If there is an argument that COM1 is a non-obvious choice (even if, in isolation, it is known), you might also include a dependent claim:

  1. The system of claim 1, wherein the input device comprises COM1.

The benefits of this are that claim 1 covers the essential elements of the invention without any unnecessary limitations (thus getting you maximum protection). Claim 2 might be useful during prosecution.

You would probably not have COM1 in your independent claim, as its only one embodiment (which is inessential, in the pen-and-paper case).

An aside about aspects

An aspect maps to an independent claim. That is, an aspect of your invention is a conception of your invention in its broadest sense. If a feature is not essential to this, it is not an aspect. It is an embodiment.

But don't get hung up in terminology. You could very well get away without using "embodiment" or "aspect" at all.

  • I am considering distancing myself from "embodiment" ,"aspect" and "claim." I am considering sticking to describing everything in lengthy detail to make sure I have covered the aspects and embodiments without those words being used against me if I ever sell the iOS app/invention. Then, let the lawyers deal with the technicalities when they make the non-prov patent, if I got lucky. I am currently reading your post more than one time to make sense of it. Did you maybe mix Com1 and Com2 in some sentences above? "COM2 in your independent claim, as its only one embodiment" did you mean Com1? – Rick James Mar 2 '17 at 10:38
  • @RickJames Good catch, I've fixed the error. If there's anything else that I can improve, let me know: understanding what features are essential (in a patent sense) is probably one of the hardest things for an inventor to get to grips with. But describing everything in detail is almost always a good plan. – Maca Mar 2 '17 at 10:42

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