Disclaimer

Overview

The following hypothetical client information brief shows the type of information that should be provided to your patent attorney in the case of a software invention.

The hypothetical invention brief serves to highlight some important points:

  1. The advantages and operation of the invention have been described along with details of possible variations. Should the inventor have failed to disclose a variation, the variation may not have been covered by the patent application.
  2. The inventor has done some of his own searching on Google Patents, Espacenet, WIPO and the USPTO. This has highlighted some of the important differences between the invention and the prior art.
  3. The inventor has brought inventorship and prior disclosure issues to the attention of his or her patent attorney.
  4. The inventor has provided several screenshots. Detailed sketches would have been adequate for a provisional application.

Providing detailed information in written form will ensure that your patent attorney appreciates all the important features of your invention.

The brief makes use of images and text from several existing patents and patent applications. These patent and patent applications are not associated with our firm.

For another example, please see our client information brief for a mechanical invention. 

Hypothetical Brief

Invention Disclosure

I have provided a number of screenshots and drawings to illustrate my invention. I have also provided access to my website at https://www.adamlaw.com.au/alpha_version/login.php. The login details are username: patent1 and password: J87yKuF3r4bc.

Notably, as detailed in the section entitled ‘prior disclosure’ below, the invention has been kept secret and my web development company understands that my idea is confidential. I would, however, like to discuss the possible implications of prior disclosures when convenient.

Graphical user interface  Description automatically generated with low confidence

My invention relates to search requests and an improved online search bidding system for third party content.

* Image taken from US10580039

Advantages

My invention has a number of advantages, including providing a search and advertising system in which:

1. Different types of advertisers are able to compete on different levels.

2. Searchers are provided with a knowledge panel in which …

3. …
4. …
5.

Provision of Advantages

First Advantage

1. The best way to gain an understanding of how my invention works is to look at my website using the access details provided above. I have, however, also included a number of screenshots below.

On one level, search queries link with entityaction pairs.  The entities are named entities in the sense ofThis is different to proper nouns and embrace

 

    Table  Description automatically generated Table  Description automatically generated

 

*Images taken from US2002/0131565

2.  The basic system layout is illustrated below. As shown, there is a primary server and a … The primary server serves a number of … The primary server is connected to … and receives information from … This allows …

 *Image taken from US7752188

3. The following diagram shows a sequence of communication steps that advantageously … As shown in the diagram …

 *Image taken from US2010/146504

4. I understand that you will prepare the necessary flowcharts based on the wording of the application. I have nonetheless included some flowcharts of my own. As you can see, the steps involve … This advantageously allows …

*Images taken from US7475021

Second Advantage

In the case of the second advantage I have included some sketches. As shown, a user can … This advantageously … etc..

*Images taken from US7421337
*Images taken from US7565155

Other Advantages

I am in the process of preparing a description of the other advantages of my invention. I will forward the description to you shortly.

Variations

I have thought of a few variations that I would like to cover, including:

1. Systems that are primarily for
2. Systems that provide a plugin
3. Systems that are able to estimate ...

Cursory Searching (Optional)

I have done a bit of cursory patent searching on Google Patents, Espacenet, WIPO and the USPTO.  There were documents that related to planning but none that relate to

Website Searching

I also did a bit of searching on Google and located the following software product:

My system provides the advantage ofby associating

Further Searching

I would like you to perform a professional search so that I have a better idea as to whether my invention is new. I would like, however, to have the search completed and protection in place by … I hope to show my invention to an investor on … but will refrain from doing so until you have confirmed that protection is in place.

Development

I am in the process of developing a special way of allowing. As I am still having this functionality designed and tested, I would like to discuss whether I should include details at this time.

Inventors

The invention has been developed by myself with the assistance of a web design company. I was the driving force behind the invention and the web design company hasn’t, in my opinion, made any real contribution.

Prior Disclosure

Although the web design company has not signed a confidentiality agreement, they did understand that the invention was to be kept secret. My website has not been released to the public.

Notes

Ultimately we would like to obtain protection in the United States of America, Australia and Europe.  We understand that software patents can possibly be more difficult to obtain in Europe as there must be a European ‘technical effect.

We have read online  that EP2587446A1 was the subject of a European appeal and is now expected to shortly grant.  We also use a natural language approach involving search entities and online actions where rewards are, in one sense, also offered in response to user actions.

A picture containing diagram  Description automatically generated Background pattern  Description automatically generated

We would like to consider filing in Europe down the track.  For now the United States and Australia are the most important to us.

Aside

The hypothetical brief mentions US10580039. 

We have performed a cursory review of US10580039 and the associated US prosecution (the US examination file-wrapper).  The patent centers around named entities and online actions.  Wikipedia indicates that the expression named entity has a technical meaning of:

In information extraction, a named entity is a real-world object, such as a person, location, organization, product, etc., that can be denoted with a proper name. It can be abstract or have a physical existence. Examples of named entities include Barack Obama, New York City, Volkswagen Golf, or anything else that can be named. Named entities can simply be viewed as entity instances (e.g., New York City is an instance of a city)

Wikipedia notes various rigid and less rigid technical meanings. 

US10580039 provides several definitions and provides support for further limitations to some possibly unclear expressions.

It is important to define terms accurately in a patent specification to: (i) provide clarity to the claimed scope; and (ii) show possession of the invention.

For the reasons above, an accurate description along with variations should/must be provided to your patent attorney.  If relevant, the description should be provided with an explanation of the boundaries of definitions.

 

*As with all information provided by this website, the content of this webpage is subject to our disclaimer. The material provided is not to be relied upon under any circumstances.