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[Paskran]

I have two ideas for web model that I would like to file for patent.

The first is structuring very common web service in a different way to improve the service and solve a few issues. When possible, I am going to build it based on open source projects with a few custom developed plug-ins.
This is not really a business model since it does not directly return revenue but might increase traffic.

The second is totally new service that I could not find on Internet whatsoever. For this one, I can charge for the service itself.

Q1. Is the first model patentable?
Q2. Do I have to build actual website before filing non-provisional patent application for web model?
Q3. Can I file provisional patent application for web model? If yes, does it require any website built before filing?

Thank you for your responses in advance!

[OMG IP]

just about anything made by (hu)man is patentable, as long as it is new, useful, and non-obvious, and complies with various statutory requirements.

It is not necessary to have working prototypes, tangible or otherwise, before filing a patent application.  Patents protect "ideas" reduced to practice, and a filed application is considred as a reduction to practice.

[JimIvey]

OMG is right.  I'll add a few thoughts.

It doesn't matter whether it's a business model.  There's no patentably significant category of "business methods" in US patent law.  Despite what many think, it's no taboo for a computer to represent money as data in the patent world.

I believe what you describe is the sort of invention for which patents can be obtained.  However, whether it's novel and non-obvious is really impossible to answer.  All those things are involved in being "patentable".

Yes, you can file a provisional application.  A much better question is whether you ought to.  Provisional patent applications are very much different than most think they are.  They don't do what many think they do.

Regards.

[Paskran]

Yes, you can file a provisional application.  A much better question is whether you ought to.  Provisional patent applications are very much different than most think they are.  They don't do what many think they do.

Regards.

Thank you, OMG and James.
Regarding the provisional, I want to have some protection for the idea before I reveal it to the web developer.
But I believe the idea will be much more refined during the course of development so I want to have some flexibility on the initial protection and file more complete application for the real patent later.
Does it make sense?

[JimIvey]

Regarding the provisional, I want to have some protection for the idea before I reveal it to the web developer.

A provisional application provides no protection whatsoever unless it meets exactly the same legal standard for sufficiency that is applied to non-provisional (real) applications.

Even then, a patent application provides no real protection until it becomes a patent. 

But I believe the idea will be much more refined during the course of development so I want to have some flexibility on the initial protection and file more complete application for the real patent later.
Does it make sense?

That's not what provisional applications were created for.  For nearly every circumstance, it's better to file a real application or file nothing.  If your basic idea is sufficiently developed to warrant protection for it in broad terms, file a real application.  If not, do nothing (but be sure to file your real application within one year), assuming you don't care about protection outside the US.

Regards.

[Paskran]

I understand that provisional applications were not created for that. But that does not mean, in my opinion, it can not be used for that.
We use many things creatively in the ways they were not originally meant for.

I also understand that a patent application provides no protection unless the patent is granted. But in reality, the possibility that the patent can be granted in the future is a big leverage to hold strong position in dealing with others. So, out of the text and into the reality, I think it can be practically used for protection.

[Isaac]

I understand that provisional applications were not created for that. But that does not mean, in my opinion, it can not be used for that.

While your statement is true, the problem is that a filing provision may not accomplish your stated objectives.   You don't get any benefit from describing initially known aspects that turn out to be only parts of the claims in your final application.  You only get a benefit when the provisional fully supports the claimed invention as required under 35 USC 112, paragraph 1 (with the possible exception of compliance with best mode requirement at the time of filing the non-provisional).

Further, when you talk about protection, be aware that the only thing a provisional can protect is your filing date for a subsequent non-provisional.  Other than making it a little harder to invalidate a later issued patent, a provisional shouldn't mean diddly to others.

Edited to fix up my 121/112 boo-boo.

[JimIvey]

I understand that provisional applications were not created for that. But that does not mean, in my opinion, it can not be used for that.
We use many things creatively in the ways they were not originally meant for.

Sure, and I can use my mountain bike to sail out to Angel Island in the Bay even though it wasn't designed for that.  The problem is that there are certain requirements for a vessel to sail across the Bay, and my mountain bike doesn't meet those requirements.  So, it's not likely to work.

The legal standard for sufficiency of a patent application, both provisional and real, is defined in one single place -- 37 USC Section 112, first paragraph.  If your provisional application isn't prepared well enough to be a real application (without claims), it's not good enough to provide any benefit as a provisional application.

You only get a benefit when the provisional fully supports the claimed invention as required under 35 USC 121, paragraph 1 (with the possible exception of compliance with best mode requirement at the time of filing the non-provisional).

Wow, I didn't realize there was any possibility of exceptions to 112p1 for provisional applications.  Do you have a cite?  I'd like to read up on that.

Regards.

[Isaac]

Wow, I didn't realize there was any possibility of exceptions to 112p1 for provisional applications.  Do you have a cite?  I'd like to read up on that.

Unfortunately I cannot cite anything really helpful because I don't know for sure.  I do not suggest that you don't need to identify the best mode in the provisional, assuming the inventor even has such a thing.

I do know that there is case law indicating that there is no need to update the best mode when filing continuations and divisionals.   In a case where the provisional contains the exact same disclosure as the non-provisional, it seems reasonable that there might be no need to identify a new best mode the time of filing the non-provisional.  I believe that such is highly likely to be the case but I don't know of any on point case law.

[JimIvey]

Unfortunately I cannot cite anything really helpful because I don't know for sure. 

I see.  I'd be really surprised to learn that there are implicit exceptions to the explicit law that provisional applications must comply with 112p1, including best mode.

Regards.

[Isaac]

I see.  I'd be really surprised to learn that there are implicit exceptions to the explicit law that provisional applications must comply with 112p1, including best mode.

So would I.   I didn't say the provisional didn't have to comply with best mode.

[Paskran]

James, I appreciate your sincere response.
However, I think we are talking based on two different standards.
You are strictly talking from legal standing point while I talk from practical standing point.

Mega stores often have dummy security cameras. Although they  do not have any legal leverage they certainly work making people refrain from shoplifting.

Although PPA has no legal leverage in protecting the idea, it can certainly work as a dummy camera in reality. And with the potential for full patent in the future, I think it actually is better than dummy cameras which have absolutely nothing.

[Isaac]

Although PPA has no legal leverage in protecting the idea, it can certainly work as a dummy camera in reality.

Not against anybody I would advise.

[JimIvey]

Although PPA has no legal leverage in protecting the idea, it can certainly work as a dummy camera in reality.

Not against anybody I would advise.

Nor against anyone I would advise.  However, the amount of patent ignorance in the business community is rather staggering. 

@Paskan:  Please note that we (a lot of us) are lawyers.  We look at and consider legal leverage.  This is the Intellectual Property Law Server.  If you want consideration of marketing leverage from a legally insufficient provisional application, you'd probably have to ask non-lawyers, e.g., venture capitalists.

Note that the VC community is getting smarter.  I've had at least one client come to me and say that the prospective buyer refused to buy a provisional application and insisted that a non-provisional be filed before the deal would go through.  It's arguable that the provisional in question was actually sufficient under Section 112, paragraph 1, but the prospective purchaser didn't care.  They knew that it's coming to light that provisional applications are problematic and just wanted the issue removed.

Regards.

[OMG IP]

I am in complete agreement with whatever JimIvey ever says re provisional applications.  He is spot on 100%, although as mentioned here, it is clearly from a view point of a patent attorney.

Provisionals have their use.  Most people do not understand how to best take advantage of that use.