What is the drafting provisional patent application for a business method/process?
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So I've doing some research and reading on provisional patent application. I've found that some people use software such as Patent Wizard to help them draft a provisional patent application and use an attorney to review the application. Before taking this route of drafting a provisional patent application myself; I contacted a nearby attorney and they told me to filled a form so they can instruct me on the best way to proceed and an estimated cost. They advised me on the best route to proceed would be to do a patent search for a bit over $1,000. The firm seems very nice and I would love to do business with them but I don't have $1,000 to do a search and possible $2,000(at least) plus filing fee(s) for a provisional patent. I'm trying to get a provisional patent on a business method/process is a new way to help customers save money (in simple terms). I know that some people advise against provisional patents. Questions: Is a search of this nature really need for a provisional patent? If so, can a person do a search themselves? And how difficult is it to perform a search? Is it possible for me to draft one on my own, if so what documents would I need? How do I create a diagram flowchart for the business method/process? Is there a guide or software that you would recommend? I did hear good things about the Patent Wizard. How would you recommend I proceed at this point? I read that a person should include as much technical information in the provisional patent application. How would you define "technical information" for a business method/process? I've read that the provisional patent should be as detailed as possible so that anyone trained in the field is able to reproduce your invention, does this mean something like : 1.) Build a website (explain how to build the website), exactly how detailed must it be?
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Answer:
Filing a patent application is a long-term commitment in spending thousands of dollars. So, unless you plan to build a business based on your method, you really need to think seriously on whether to file in the first place, especially a business-method patent (they are very hard to get and the patent law about them is in constant flux). You don't need to do a professional search to file a provisional patent, especially if you are very familiar with the related art. A search will simply give you more confidence that you really have something novel and non obvious to file and, long term, it may save you lots of money. You can search on your own. Google scholar is a good starting point since it allows you to search both patents and publication. Original drawings can be by hand, or you can use any drawing software (powerpoint, vizio, etc.). In terms of how much detail you need to write. Think of yourself as the boss who would hire people (hopefully experts in their field) to build your method. They should know already how to build web sites; how to access a database, how to process payments, etc. You simply need to tell them what components they need (ex. a computer, a web interface, a database) and how they interact together. You may want to read some patents on similar topics to get a better idea. Whatever you write, it is a very good idea to have it reviewed by a professional patent agent or patent attorney
Konstantinos Konstantinides at Quora Visit the source
Other answers
I have seen the output from patent drafting programs, and I don't care for the quality. Business methods need to be tied into supporting information processing systems. Good examples are patents assigned to Google, Yahoo and so forth. You could model your draft on these applications. Generally, the application should describe at least one method, at least one machine and at least one computer-readable medium. Claims are unnecessary in provisional applications. The application should recite as many embodiments of your systems and methods, even blue sky variations, as possible. The application should recite descriptions of supporting hardware, as many variations as you can think of, even if impractical or improbable. Avoid using the words "invention", "important", "essential" and "preferred". I agree its a good idea to have an experienced attorney/agent look at the app. The law relating to these types of patents is quirky. If you are performing your own search, another good resource is http://worldwide.espacenet.com/?locale=en_EP, a resource provided by the EPO, which provides comprehensive international coverage. If you perform your own search and create your own draft, you can get a provisional on file for the basic filing fee. You may qualify as a microentity, which brings the fee down to $65. If you do a good job on the draft, fees for attorney/ agent review, if you go that route, could be $500-$1,000. Then you have a year to file a followup utility application, the prosecution of which could cost much more. Bear in mind, these applications have in the past take 3+ years and have less than 50% allowance rate.This answer is not a substitute for professional legal advice....
Wayne V. Harper
I am happy to provide an updated answer for this question as the Supreme Court issued an opinion in 2015 involving this area of patent law. In http://www.supremecourt.gov/opinions/13pdf/13-298_7lh8.pdf, a patent troll sued a consortium of banks for using patents that were âdesigned to facilitate the exchange of financial obligations between two parties by using a computer system as a third-party intermediary.â In other words, the patent dispute was over a business method. A bunch of amicus briefs were submitted by tech companies like Google and LinkedIn, who feared the repercussions if this business method was held not to be a valid patent.The highest court in the land held that the patent was an âabstract ideaâ and therefore, not patentable pursuant to 35 U.S.C. § 101. Specifically, the Court found âthe method claims, which merely require generic computer implementation, fail to transform that abstract idea into a patent eligible invention.â The framework to determine if the business method is just an abstract idea has two parts: (1) determine if the claim at issue is directed toward an abstract idea; and (2) examine the elements of the claim to determine whether it contains an âinventive conceptâ sufficient to transform the abstract idea into a patent-eligible application. Pretty confusing right?The vague advice from Supreme Court has caused a dramatic effect in the lower courts. In fact, just a few days ago IP Watchdog posted an http://www.ipwatchdog.com/2016/04/07/district-courts-misapplying-alice/id=68104/ âFederal Circuit guidance is needed because district courts are misapplying Alice.â Therein, the author describes that âFederal Circuit guidance is needed because many district courts have misapplied Alice and sidestepped the rigorous factual analysis that has historically been required, and should still be required, prior to patent invalidation under Section 101. Over 7,500 claims in 150 patents have been invalidated as a matter of law.â The precedent from Alice should make inventors wary of drafting a provisional patent application on their own. It is really important to consult a seasoned patent attorney that will ensure your method rises up to the level of patentability. Finding inventors an affordable and seasoned patent attorney is something we do on a daily basis here at https://www.lawtrades.com/?t=quora. Depending on the complexity, expect to pay between $1,000 and $1,500 for assistance with your provisional patent application. I invite you to check out us out to obtain a free fixed upfront price quote. Don't hesitate to contact me directly with any additional questions or concerns you have about protecting your software or intellectual property in general.
Raad Ahmed
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