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I was working on a piece of software, and after implementing the entire system I looked up similar devices in the USPTO search for applications. I found a patent application (submitted april 2020) that is very similar to my work, but it is also very generic. No real instruction on how to build it or what system should be used exactly, just broad fields/areas of expertise (such as "deep learning" to do x rather than a specific technology). They have some flow and box diagrams showing their process. I just think their scope is very broad, and don't believe it has been implemented yet (because it is very broad and seems to encompass everything under the sun).

Since its just an application (A1) would I be able to:

  1. put my work online for free (open source)?
  2. apply for a patent my own work and being more narrow? (narrow the scope of the technologies used and scope of the invention)

Thank you for your help, I am very new to patents.

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  • I think offering for free is not allowed, because the patent grants monopoly. Technically i believe you could publish your source code, but not the artifacts? – Pa_ Mar 2 at 19:54
  • @Pa_ what do you mean by the artifacts? – Kevin Mar 2 at 20:09
  • @Pa_ the OP said it was an application, not a granted patent so there is not monopoly. And it isn't 100% clear that if it were granted its claims would read on whatever OP would make/publish. – George White Mar 2 at 20:10
  • OP: check this out, that's more or less what i meant – Pa_ Mar 3 at 8:55
  • Could you please post the application number? It’s public so there is no reason not to. – Eric S Mar 3 at 14:40
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The most important part of the patent application is at the end. The end includes a list of claims that act as a "fence" that protects their IP. However, keep in mind that you are reading a patent application, not an issued patent. The Applicant is likely to amend the claims during examination and the issued claims in a patent may be different from the application. The issued version of the claims in a patent provides the protection and what they can prevent others from doing.

It is possible you could file your own application and you could claim something different from what they are doing in that application.

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  • Welcome to Ask Patents from reg. #62267 – George White Mar 2 at 20:16
  • Nice answer and welcome to Ask Patents. You might want to mention that not all applications get granted and that issued claims are almost always narrower than claims in an application. – Eric S Mar 2 at 21:50
  • I would say "claim something different from what they disclosed in that application." – George White Mar 2 at 23:36
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With regards to your second question:

  1. apply for a patent my own work and being more narrow? (narrow the scope of the technologies used and scope of the invention)

If your invention is a patentable refinement of the previous invention, you may be able to file for a patent. However, even if your patent is granted, if the invention is covered by the claims of the previous patent (assuming it gets granted), you would still infringe on the previous patent and could be sued.

For instance if patent a has a claim containing steps A, B and C. Your invention has a claim with steps A, B, C and D. You can get protection for the addition of D, but your invention infringes since it practices A, B and C. A patent on the refinement doesn't guarantee freedom to operate.

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  • Good answer - and no patent provides any positive properties of freedom to operate. – George White Mar 3 at 23:38
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If you think it covers all under the sun, gather all the documentation you have / code / etc that is older than the priority date of the patent application, don’t make an argument and send it to the examiner on this link:

https://www.uspto.gov/patents/initiatives/third-party-preissuance-submissions

You will help him.

Under 35 U.S.C. 122(e), such submissions may be made before (1) the later of (i) 6 months after the date of publication or (ii) the date of a first Office action on the merits rejecting any claims, or (2) before the date of a notice of allowance, if earlier. Section 122(e) also provides for such fees as the Director may prescribe. This new provision was effective on September 16, 2012, and applies to any patent application.

But suppose that they get grated that wide patent,

The American Inventors Protection Act of 1999 (AIPA) provides damages for infringement in the period before a patent applicant is granted a patent. Provisional rights, also known as pre-issuance royalties, provide a patentee with the prospect of obtaining a reasonable royalty from a third party that infringes a published application claim. This right is provided only if the third party has actual notice of the application and a patent issues from the application with a substantially identical claim (source)

I could say that you have notice of the application, so you should take care of this provisional right, also file the third party preissuance submission and also file your own patent.

put my work online for free (open source)?

There are big differences between publishing something for free, online (public domain) and using an open source license, if you license something is because you have certain rights over the licensed thing, the source code by it self does not infringe the patent but if you license it under some license like GPL v3 you are granting others some rights that you don't have

GPL v3 says: Each contributor grants you a non-exclusive, worldwide, royalty-free patent license under the contributor's essential patent claims, to make, use, sell, offer for sale, import and otherwise run, modify and propagate the contents of its contributor version.

You can't grant those rights (if they finally become effective with a granted patent)

apply for a patent my own work and being more narrow? (narrow the scope of the technologies used and scope of the invention)

Yes, you can try that, but do it before publishing your code online (for free, in wharever kind of licence you wanna use). If you publish your code online it will be taken as prior art by most patent offices. In the US you will have a grace period of 12 months to file the patent after the publishing of your code.

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    I see, no my code was written after his application. I didn't know about his application while I wrote my code, only after I made a demo. Thank you. – Kevin Mar 3 at 11:52
  • Issues with this answer - 35 USC §122(e) is only for published documents, not "gather all your documents/code/etc". Also the submission can't containment arguments. Just succinct statements as to the relevance. The comments regarding contributing under license seem off. You are granting whatever rights you might or might not have not asserting any specific rights in conflict with anyone else's rights. I don't know what "under the sun" means in this context. – George White Mar 3 at 21:13
  • Hi George, the "gather all your documents ..." is related to the submission of prior art to the USPTO not related to 35 USC §122(e). On the "make your arguments" was a way of saying it, not correct. The comment on licence why seems off ? How he will grant some rigths he does not have ? If you see the GLPv3 terms it clearly states you grant those rigths to use the code and any patent rigths over it. – YOGO Mar 3 at 21:20
  • You can edit your answer to reflect George White’s comments. For example you can say “gather documents, code, etc. published before the priority date...”. – Eric S Mar 10 at 22:41
  • Great, done , I added “don’t” before “make an argument” – YOGO Mar 11 at 18:12

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