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I want to patent a methodology for computing an important value, which is often reported by companies. My methodology gives a much better estimate of this value. The patent application attornies asked me how could you tell whether the methodology is infringed?

How can I answer this question? Is this a requirement in the provisional application and what are they looking for?

  • I don't think it has anything to do with the provisional application. Practically speaking you might not be able to protect your invention if you can't detect and prove whether someone has infringed on it. – Eric Shain May 16 at 0:57
  • @EricShain I understand. My question is how would one detect if someone has used their invention inside a company? – KRL May 16 at 1:38
  • You don’t need to answer the question to file the application. I can’t answer the other question since I know nothing of the invention or it’s use. – Eric Shain May 16 at 2:30
  • You also need to consider that not all inventions are suitable for patenting. If it's indeed very difficult to detect infringement, you might be better suited to a trade secret. – Chris Jun 16 at 11:04
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Is this a requirement in the provisional application and what are they looking for?

No, it isn't a requirement for a provisional application, since that merely requires that inventor disclose the specification of the invention with all key elements. However, any specification you disclose should also consider how you will gather evidence to prove an infringement of a claim. This comes into play with drafting your claims--but if you don't have enough material in the specification you can't really cite it in your claims later. You can't introduce new material in citing claims.

In order to maintain the additional year of protection afforded by filing a provisional patent claims you draft thereafter may not stray from any elements not filed within the original provisional patent application.

Note: The patent claims are the language that fully defines the narrow subject matter inventor(s) claim they have invented. If the patent is granted, these claims are what is used in a court of law to identify what exactly is infringed or not.

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I assume you are trying to patent an algorithm because math formulas are not patentable.

how could you tell whether the methodology is infringed

Look for competing products in the market and try to analyse their algorithim then compare it with that of yours.

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They may be looking for information that can help them improve the claims. If you can tell them how you might detect use of your invention, then they can try and claim some of those markers, or at least disclose them.

For example, "a new and useful way of making widgets" may or may not be easy to detect. But if can determine that someone is using your new and useful way because doing so makes the widget shinier than traditionally made widgets, because it reduces production time, because it leads to consumption of fewer resources, or because it causes the widgets to come off the assembly line in unusual orientations, then they can add some or all of those elements to the claim or disclose them in the patent.

You might not have thought of any of those things as being part of your invention, but there can be value in having some claims or disclosures that mention these things.

They may also be making the point that unless you have a way of detecting infringement, you might want to think hard about spending the money on the patent.

These are just guesses. What you should really do is ask you attorneys.

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This can be very difficult. For instance, if the calculated value is of use internally to the infringing company, you may have no way to find out that they are using your algorithm. If you wish to sell the results of the calculation, it might be preferable to keep the algorithm as a trade secret although this opens the door to reverse engineering. Otherwise, if you can demonstrate that with the same input parameters the potentially infringing company gets exactly the same result as your patented algorithm you could sue them and hope to prove to a jury the likelihood of infringement. I'm not a lawyer so I don't know whether there is a process for auditing the potentially infringing company during the law suit.

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