Survival guide for writing a Provisional Patent Yourself

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Things I learned about provisional patenting while drafting one for an AI software algorithm

Intro

This post will describe the things I learned about patent writing while writing a provisional patent for an AI algorithm. It is based on my own personal notes when writing the provisional as well as my experience of the process. The post is directed to people who want to defend their invention\IP (intellectual property), people who want to understand where to start and end with provisional patent writing and people who are wondering if to employ a patent writer or do it themselves. I am not a patent lawyer, so do not take my advice as given, consult a patent lawyer for true practitioner input.

Prerequisites (all of these are straightforward and easy to find online explanations):

1. Basic knowledge of provisional patent – what is it good for, why is it used.
2. Know the structure required for a provisional patent (summary, description, claims etc.)
3. Know the difference between a provisional patent and a patent
4. Do your own patent research and find similar patents in a similar field. This is good both for reference and to understand how you need to write and style your patent

Mystical phrases and what do they mean

Someone who is skilled in the art

This phrase is used to describe someone with knowledge of the domain you are writing the patent for. The phrase is used in order to explain that a certain term you are discussing is familiar in the patent field. For example, the sentence “a neural network gradient decent learning process will be used as is familiar to someone who is skilled in the art” will say that gradient decent is a standard procedure and you didn’t see the benefit of elaborating more as part of your patent application.

Prior art

Anything that is relevant to the subject of your patent which was a previous invention. It could come in a form of a previous patent, scientific publication, media publication, tutorial, youtube video and more.

An embodiment

An embodiment is one realization of the concepts you describe in your patent. For example, if your patent is an algorithm, then an embodiment of this algorithm can be one specific physical implementation of this algorithm on a PC machine, including how it interacts with the input and output devices of the machine. Another embodiment can be an implementation of the same algorithm in the cloud, including how the different cloud components and edge devices communicate to make this algorithm work and be consumed.

Or, if the algorithm has several different parts or options available, an embodiment will be a specific description of which parts are used. For example, if it is a 3D reconstruction algorithm from image and it can get as input the camera parameters, or, it can calculate the camera parameters itself. One embodiment will be a 3D reconstruction algorithm that gets camera parameters as input, another embodiment will be a 3D reconstruction algorithm which calculates camera parameters itself. A third embodiment will be a 3D reconstruction algorithm which can get the camera parameters, checks if the camera parameters are received and are valid, in case they are not received or valid – calculates the camera parameters.

In your patent application you want to have at least one embodiment, preferably at least the one which is the best one in the your eyes (usually this means the broadest one) – called the “preferred embodiment” or “best mode embodiment “. A preferred embodiment demonstrates that the inventor had in mind a specific implementation of his invention at the time of the patent filing, and he was not just making something up which is not feasible to make it work. If it is a software patent, make sure you have at-least one embodiment which specifies the physical implementation of the software – how it runs on machines, what type of machines, what are the required machine characteristics. Preferably put this embodiment in your claims also.

Priority date

The date in which you apply the provisional – this is the one that will be used in your patent’s application date, if you ever submit a non-provisional patent. It is important your priority date will be earlier than the competition, since this is what decides who the invention belongs to. The nice thing is that you can apply the provisional in one jurisdiction (for example, US) and then apply the patent based on this provisional in many jurisdiction (Europe, China etc.) keeping that first priority date. There are extra 60 days after applying the provisional to add all the material which is missing in the provisional and send another provisional, keeping the original priority date. This could extend to 90 days, but unclear exactly how and not guaranteed

Goals of a patent (provisional or not)

The formally stated goals of a patent are:

1. Securing a priority date for your new invention.
2. Defending your invention from copies in two possible ways:
   1. If you do find someone who copied your invention you can sue them. If they are unable to prove that their copy is actually an original invention of theirs, you will win the lawsuit and be entitled for compensation.
   2. Defending from getting sued by previous patent holders. If someone has a patent with an earlier priority date for an invention which is similar to yours but not exact, they might try to sue you by challenging your patent. If your patent indeed has something new over the prior art of the entity suing (this novelty has to appear and be written in your claims) and the court confirms this to be so, you are entitled for your invention and can enjoy its’ fruits.

Notice – your patent and its’ content do not have any other real tangible meaning. So, in case no-one copies your invention, or someone copies and you decide not to take action against it, or, you don’t get sued for infringing on someone else’s IP, everything written in your patent does not really hold any value. In this case, the patent is there much like a security alarm in a private house – it shows you thought of defense, but doesn’t hold any real meaning until a really burglar tries to break in. When the burglar does decide to break in, then the alarm is truly tested to see if it works, or in the patent case, the patent is tested to see if it is defensible.

Once a patent (non-provisional) is published, everyone has access to it and everyone can exactly see what your invention is and how it works. But, presumably, no-one is allowed to copy your invention until the patent expires, that is, if the patent is defensible.

In the startup world, many people will tell you investors want to see that you have patents as an IP asset, which seems to be true when searching for investment. While many entrepreneurs and business people will tell you that patents are not interesting because of three main reasons:

1. No-one will sue you when you’re a small startup. The only real patent suits happen between big companies (the Googles, Samsungs, Apples of the world) and if you’ve reached a state where you’re big enough for patent lawsuits you’ve done alright for yourself and you’re not really a startup anymore.
2. Many times patents aren’t really defensible, especially software and chemistry patents – which are easy to tweak a bit and override the patent defenses – making your invention visible to all and not defensible. By the way, legend says this is why Coca-Cola never published their sauce recipe as a patent and keep it secret instead.
3. When you’re a startup, you got a million other things to worry about, usually regarding immediate business, and thinking 5-10 years ahead what could happen if your invention becomes truly big and successful and you will be in an IP battle, instead of working on it to become big and successful is a waste of resources.

Wait, so why write a software patent?

1. If your patent is defensible, you got a good IP asset.
2. You can use the patent as a warning flag for competitors (much like a house alarm). Patent lawsuits can be expensive and energy consuming, so people might be deterred from copying you just because of this threat.
3. It helps when talking to investors.

Writing guidelines

Claims

Claims is where you distinguish your invention from the rest. When your patent is challenged your claims are checked against the claims of the challenger, if you have a claim that he doesn’t have then your patent can be defended. When writing a claim it is important to describe how the various components are structured and how the various components interact and connect. It is necessary to describe the invention so that it is complete, so that it works, but also so that it is different than what is known in the prior art. In order to define an invention that is new and non-obvious you must include something in the claim that is different than what is found in the prior art.

A claim might be:

1. Improvement of prior art by adding something to an existing invention.
2. Improvement of prior art by reducing something from a previous invention, making it simpler, cheaper, lighter etc.
3. Completely new invention, never existing in part or whole in prior art.

Your aim should be to have some patent claims you think are unique, but which are exceptionally broad. You should also use dependent-claims which are more narrow claims which present a specific version of the invention. Use dependent-claims to describe all the different options of the invention. Also, make sure to write dependent claims which you think represent the best version of the invention. In this way, you have both broad and narrow definitions of your invention, making it more defensible. When you will file a non-provisional this will force the patent office to consider your invention more seriously.

At the beginning of the claims section, start with “I claim,” or “The invention claimed is” and only then start listing all the claims. Each claim must begin with a capital letter and end with a period. Periods may not be used elsewhere in the claims except for abbreviations. What this means is that each claim can be only one sentence. This is true regardless of how tortured the sentence structure is and how incomprehensible the sentence may be to those not trained in patent claim drafting. When drafting a claim start with something like this: 1. A {insert title} comprising: {list the parts one by one} {then explain how each are connected}

Where a claim sets forth a plurality of elements or steps, each element or step of the claim can be separated by a line indentation. It is possible to enumerate the claims with numbers, and reference claims in their dependent-claims using these numbers. Reference characters and numbers from the description and drawings can be used in the claims also, enclosed within parentheses.

Example of the first two claims (regular and dependent) from a patent by google for 3D search (US 8,686,992 B1)

What is claimed is:

1. A computer implemented method of 3D shape retrieval from a query 3D model, comprising: extracting, by one or more processing device, a plurality of features of the query 3D model; generating, by the one or more processing devices, a representation of the query 3D model; calculating, by the one or more processing devices, a first correlation by combining first coefficients associated with the representation of the query 3D model and second coefficients associated with representations of 3D models in the repository to obtain a first output and calculating an inverse rotational Fourier transform of the first output to obtain the first correlation, wherein a number of the first and second coefficients depends on a specified first bandwidth associated with the transform; calculating, by the one or more processing devices, a first similarity score based on the correlation; ranking, by the one or more processing devices, the 3D models based on the first similarity score; calculating, by the one or more processing devices, a second correlation by combining third coefficients associated with the representation of the query 3D model and fourth coefficients associated with representations of 3D models in the repository to obtain a second output and calculating an inverse rotational Fourier transform of the second output to obtain the second correlation, wherein a number of the third and fourth coefficients depends on a specified second bandwidth associated with the trans form, the second bandwidth being higher than the first bandwidth: calculating, by the one or more processing devices, a second similarity score based on the second correlation; ranking, by the one or more processing devices, the 3D models used in the second correlation based on the second similarity score; and returning, by the one or more processing devices, one or more 3D models.

2. The computer implemented method of claim 1, further comprising: determining, by the one or more processing devices, a plurality of matching scores between the query 3D model and the 3D models in the repository for each rotational alignment of the query 3D model; and Selecting, by the one or more processing devices, the high est score from the plurality of matching scores based on the determining step.

Description

Following are things to consider, write, notice and remark on when writing the description part of your patent.

Specification of how the invention\software work:

• How the software operates from the perspective of the computer, not the perspective of the user? Describe the overall computer architecture of the system within which the software will exist. Define invention in terms of an overall system that has tangible components. Explain how things will be run, how will the process be implemented (hardware, processor, software architecture). Describe as many tangible things as possible. What are those tangible components? Databases, servers, receivers, transmitters, memory?
• Explain each technical details of achieving the goals of the invention in its’ own section.
• Describe the desired functionality, including the different paths the process can take (things not working as expected) and then describe how to reach that desired functionality.
• How are things connected and interact? What are the alternatives for making, connection, interaction?
• The description of a software\algorithm patent should be enough for someone who is skilled in the art – a code developer – to be able to write the code that implements my invention.
• If possible, add code\pseudocode samples.

General description writing guidelines:

• Write as if the invention is complete and everything was tested and validated.
• Explain how the goal of the invention is achieved.
• Write simple explanations that a reasonably educated person can understand.
• Describe every possible version of the patent, even those that make less sense, as long as they can work in any way:
  • Describe the single best and most complete way to make your invention, including any and all options, preferences, constructs, processes and more.
  • Describe how to make your invention in a way that leaves out all options, constructs , processes except for those that are absolutely necessary for the invention to work.
  • Add best mode embodiment.
• Define any term you use exactly, so there won’t be any possible ambiguity. The specification should serve as a glossary to the claim terms so that those who will read the patent can clearly ascertain the meaning of the claim terms.
• Explain any non-obvious or counter-intuitive steps, connections or limitations.
• Pay particular attention to any preparations that may be necessary prior to beginning the making or using process.
• Explain how to use the invention. Think of other ways the invention can be used even if it’s inferior. What are the functions or features that consumers will identify as an advantage?

References to prior art:

• Add examples of different previous techniques.
• Explain what is specifically unique compared to the prior art.

Photos and diagrams

• Flowcharts\Diagrams to prepare:
  • A single flowchart that depicts the overall working of the software.
  • A series of flow charts that show with painstaking detail the various routines and subroutines that together connect to create and deliver the complete functionality of the computer system as enabled by the software.
• 25-30 mm spacing from left and right of page.
• 20-25mm spacing from top and bottom of page.
• Number the blocks in the diagram.
• Number everything (1/10…).
• Better to have black and white images and diagrams than colored.

General patent drafting guidelines

• Do no publish anything about your invention on any medium (online, youtube, lecture, document to customer, news article, social media post, etc.) before you have filed the provisional, otherwise when your patent will be challenged it might not be defend-able since the invention was already public knowledge.
• A provisional patent is kept private until the final patent is applied. Even then, no one goes over a provisional patent until there comes a time when the patent is challenged. Therefore, write as much as you can and as deeply as you can in the provisional. You could later decide if you want to file the regular patent based on it or not. You could choose if you want to keep the information private or not, but in case you will want to file the final patent an elaborate provisional will help you defend it better.
• Anything you write in the provisional patent will be considered in case the patent gets challenged. Especially in the European and Chinese patent offices, if you didn’t specify something, or didn’t elaborate enough in the provisional, no matter if you later did specify in the final patent application, they will consider what you wrote in the provisional patent.
• A single provisional patent can be the sources of several filed non-provisional patents, using the priority date of that first provisional patent.
• Try to avoid writing relevance terms (such as approximately, closely, substantially). If you have to use them, make sure you define what the relevance means.
• Don’t be too definite. For example, instead of saying something like “the only thing that makes the present invention unique is…” It is better to say something like “one of the things that makes the present invention unique is…”
• Use the phrasing “one or more” for things that can be singular or plural.
• Do not address you invention as simple, instead address it as is elegant.
• Before writing the patent description, start with writing all your claims. This will help you understand later what you should be elaborating on and explaining more in the description.
• Make sure fonts embedded in the PDF, or use an image PDF instead of textual.
• AI Patents in computer vision are trendy nowadays, getting higher approval rates than other software patents. So, if you can set your field of invention to something related to this it might help later with your patent approval. (https://www.kilpatricktownsend.com/en/Insights/Publications/2019/4/PatentingTrendsStudy)
• This blog has a lot of good information, but it is very repetitive and there is a lot of marketing content in between, so it takes time to find the valuable pieces: https://www.ipwatchdog.com/2017/05/27/invention-to-patent-101-everything-know-get-started/id=83792/

Concluding note

It’s better to submit something quickly and fix it or add to it later than spend weeks drafting a perfect provisional (which won’t be perfect since you are not a professional accomplished patent writer). Set a specific date for you to finish writing the provisional and stick to it, I would recommend up to 12 days for the entire process if it is your first time (less if you’ve already done this before)