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[flashlight6]

Background: I am prosecuting my own business method invention. The invention is a specific type of system and data visualization enabled by a software algorithm that generates educational curriculums. It was originally drafted by a patent attorney about a year ago (and since that was so expensive, I have since become a patent agent), so I could to file, though my attorney still represents us. We and some business partners are currently seeking investment funding for the invention.
 
Situation: I have written a CIP for a PCT due in 3 days and added a lot of detail about the algorithm (almost pseudocode; 40 pages; 5 drawings of flowchart, but no claims changes). My fear is that the original claims might be non-enabled by the description without the detail of how the algorithm works, which is not detailed in the original spec. While it may indeed be novel as business method, regardless of the algorithm, I figure what could it hurt to add more?




I just spoke with my lawyer and he disagrees and says there is great care between putting in too little and too much. Is this true? Why would it ever be too much as long as the added portion increases the novelty?

He thinks I should not file the CIP, but just the original non-provisional for the PCT.  I want to file the CIP.

My reasoning:
1. This way if the original claims are enabled, great no harm done.
2. If not, than I get the filing date of the CIP.

Only reason I can think not to file is that it does describe a data structure, but every software linked patent application probably does the same thing? And I am not claiming it, just supporting the original claims with it. Could just describing a data structure associated with the algorithm, get me a rejection as not patentable material?

Also regarding methods claims.

I know this would not be patentable as a device but as a method?

Step 1
Step 2
Step 3.
Step 4. create a widget
Step 5.
Step 6.

where the means to create the widget are not sufficiently detailed in the spec?

[khazzah]

Situation: I have written a CIP for a PCT due in 3 days and added a lot of detail about the algorithm (almost pseudocode; 40 pages; 5 drawings of flowchart, but no claims changes). My fear is that the original claims might be non-enabled by the description without the detail of how the algorithm works, which is not detailed in the original spec. While it may indeed be novel as business method, regardless of the algorithm, I figure what could it hurt to add more?

How timely ... we just had a really long and complicated discussion about CIPs and enablement here: http://www.intelproplaw.com/ip_forum/index.php/topic,16587.0.html

The other thread may not answer your question, but suggest you read it for background.

[khazzah]

I know this would not be patentable as a device but as a method?

Step 4. create a widget

where the means to create the widget are not sufficiently detailed in the spec?

Is a widget something physical? Or is it a software component?

Do you really need to claim "creating" it? Generally, you want to claim as little as possible to distinguish over the prior art. That is, if the claim element isn't part of the inventive aspect, it probably doesn't belong in the claim in the first place.

[flashlight6]

//Is a widget something physical? Or is it a software component?

The "widget" is a lexicographically named (specific to the app) visualization of data generated by a software component. As a step 5 (or so) in the app.


//Do you really need to claim "creating" it?

the claim is already in the non-provisional. I am afraid that

step 5: create the "widget"

without the detail of how the software creates the widget is nonenabling.

It may be a POSITA question. Since, I created the algorithm that the software uses to create the widget and I am not a professional programmer (but casual), the original spec may indeed be enabling. But the details (40 pages) I put in the spec might signal that the original disclosure is indeed not enabling. However, a POSITA computer scientist might be able to do it quite easily. I have never had an examination so I don't know. My attorney recommends not doing a CIP.

In the thread that you sent me to Khazza, you detailed one situation where you felt that a CIP would be helpful and I think that it may be this exact scenario.





 

[Isaac]

I think the US is the only country with a CIP concept.

[khazzah]

I think the US is the only country with a CIP concept.

Ah ... that's important. I'm glad Issac considered this threshold issue. Yeah, I'm not sure there is any such thing as a "PCT CIP application." 

Flashlight, you need to give us more information.

I have written a CIP for a PCT due in 3 days and added a lot of detail about the algorithm (almost pseudocode; 40 pages; 5 drawings of flowchart, but no claims changes).

What exactly do you mean by "CIP for a PCT"?

What have you filed already? A US provisional? A US utility? A PCT application?  And what is "due in 3 days"?

[flashlight6]

Ah ... that's important. I'm glad Issac considered this threshold issue. Yeah, I'm not sure there is any such thing as a "PCT CIP application." 

Flashlight, you need to give us more information.

I have written a CIP for a PCT due in 3 days and added a lot of detail about the algorithm (almost pseudocode; 40 pages; 5 drawings of flowchart, but no claims changes).

What exactly do you mean by "CIP for a PCT"?

What have you filed already? A US provisional? A US utility? A PCT application?  And what is "due in 3 days"?

I already have a non-provisional, year deadline is 1/29.
I have written a CIP of that application as the PCT application.

My understanding is that I can file a continuation-in-part of a national application as a pct application,

http://www.uspto.gov/web/offices/pac/mpep/documents/1800_1817_02.htm#sect1817.02

I am worried that my original spec for my own invention (written by another attorney) is non-enabling. He thinks it is. I think that adding more info via a CIP cannot hurt (at least I'll get the PCT filing date, if hes wrong).  He says it can cause harm by adding too much detail. So whats the harm? Not sure what he means.

[khazzah]

I have written a CIP of that application as the PCT application.

My understanding is that I can file a continuation-in-part of a national application as a pct application,
http://www.uspto.gov/web/offices/pac/mpep/documents/1800_1817_02.htm#sect1817.02

I read the cited PCT rule as saying that you can *designate* your PCT app as a CIP. When your PCT CIP goes national in the US, that's fine. But the designation won't do you any good when you go national stage in a country with laws that simply don't include the concept of a CIP.

I think you need to talk to your attorney to determine whether or not a PCT CIP will achieve what you want in any country other than the US.

So whats the harm? Not sure what he means.

Dunno. Ask him to explain.

...  I created the algorithm that the software uses to create the widget and I am not a professional programmer (but casual), the original spec may indeed be enabling.

Your statement "I created..." tells me that created the widget is part of the novelty. Therefore, your spec must describe how to create the widget, in enough detail so that a POSITA could do it.

It's that simple, and that hard. Exactly how much detail is a fact-specific question that can't be answered here. Other threads -- including, I think, the other CIP thread I directed you to -- have discussed how difficult it can be to judge how much detail is needed for enablement.

But the details (40 pages) I put in the spec might signal that the original disclosure is indeed not enabling.

There is no rule of law that says that. I can see that argument being made by a litigator who is trying to invalidate your patent. The fact-finder (judge or jury) might buy it. Might not.

[flashlight6]

Thanks Kazzah.

I talked with another patent attorney last night about the particulars and he seems to think that I might have reason for concern regarding enablement. It truly is a POSITA question. The extra stuff I threw in there makes it more novel, not less IMO so I don't see the harm.

I felt that my lawyer might have some extra knowledge I was not aware of, but it seems that that might not be the case. He might have been concerned about trade secrets (it's nothing that spectacular).

Anyway, two days left. I am going to not pay the fees, file both the CIP and the original. Then I will talk to my lawyer about it, decide, and let the one I don't want go abandoned (That's ok right?). I think that makes the most sense right now.

[khazzah]

I am going to not pay the fees, file both the CIP and the original. Then I will talk to my lawyer about it, decide, and let the one I don't want go abandoned (That's ok right?).

Yes, OK to file both an let one go abandoned. [Or to pursue both if you want.]

Still not sure why it's a *PCT* CIP if you other countries don't have CIPs ... why not just a straight US CIP?

[flashlight6]

Thanks

//Still not sure why it's a *PCT* CIP if you other countries don't have CIPs ... why not just a straight US CIP?

I know in the US, that as long as the original claims are supported by the original spec, no problem. The CIP would only serve as a means to add to the disclosure without changing the original claims. Thus, if my original claims get rejected, I can rewrite the claims for the info in the CIP disclosure and at least get the filing date of that.

As far as other countries I am not so sure. If other countries do not have a CIP concept, would it mean that since my original and CIP would have different disclosures (according to other countries), that claiming my original priority date would be invalid? Then no matter what I just get the filing date of the PCT as my priority date?

If this is the case, than it is a toss up between the benefits of the original apps priority date versus my fear of lack of enablement of the original spec.

 Not sure if I am in the right ballpark on this.

[khazzah]

If other countries do not have a CIP concept, would it mean that since my original and CIP would have different disclosures (according to other countries), that claiming my original priority date would be invalid? Then no matter what I just get the filing date of the PCT as my priority date?

Don't know *what* the effect is of a PCT-CIP going national in a country that doesn't have CIPs. Loss of priority? The entire app is invalid? I dunno. If you really want coverage outside the US, I wouldn't file PCT-CIP until I knew the answers to these questions.

Try posting a separate question along the lines "does any country other than the US have CIPs" or "effect of PCT-IP going national in countries without CIPs" and maybe someone with more international experience can help.

[Isaac]

Try posting a separate question along the lines "does any country other than the US have CIPs" or "effect of PCT-IP going national in countries without CIPs" and maybe someone with more international experience can help.

My understanding is that you cannot add matter when entering the national phase from the international phase, which is what I understand the OP to be doing.  In the US, there is a second procedure in which you can file a continuation to the international application.  The continuation can be a CIP with new matter.  During prosecution the continuation gets treated like a regular US application and does not get the slightly different treatment that you get when you simply enter the national phase.   

It's possible that my terminology is non-conventional, and others are invited to correct me.

I don't believe any countries other than the US have that second method.  You just get to amend your claims and fix errors when you enter the national stage.

Perhaps I'm completely missing what the OP is trying to do.

[khazzah]

Perhaps I'm completely missing what the OP is trying to do.

I think OP is trying to do what we've been discussing in the other (CIP) thread -- file a CIP app that includes more detail, just in case the first app isn't enabling. I presume he wants to file PCT to get coverage outside the US. If not, then PCT is a waste of money.

My understanding is that you cannot add matter when entering the national phase from the international phase, which is what I understand the OP to be doing. 

Yeah, that's what OP is doing. So any idea why there is such a thing as a PCT-CIP?

http://www.uspto.gov/web/offices/pac/mpep/documents/1800_1817_02.htm#sect1817.02

[Isaac]

Yeah, that's what OP is doing. So any idea why there is such a thing as a PCT-CIP?

I think it allows the US to do its thing while along others to do theirs which I believe  would mean ignoring any priority claims.  But it might mean that I've made an error.  I hope not, I'm already well over quota for the week.