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[Sabachka]

My topic relates to the source code used to program an FPGA, so an embodiment is directed to hardware. However, I think the topic relates to software as well.

I don't have a good understanding at this point of the details of the algorithms that are implemented in the FPGA, and the people I am working with don't have a sufficient understanding either. The author of the code is busy finishing and testing the code and won't be available for awhile. I would like to file a provisional application to obtain a priority date.

My primary concern is that the provisional app. enable any claims that are later drafted for a non-provisional. Along with the code, I would include some block diagrams and text describing the context, the problem, and the solution provided by the overall design, of which the FPGA is the key component. It seems to me that by disclosing the code that I've disclosed any algorithms that might be claimed later. It also seems to me that the code is kept secret as the provisional is not published; it might only be revealed in litigation, where some kind protective order ought to be available. It could also be revealed in an interference and hopefully there is some sort of analog to protective order in those proceedings.

Any advice? Anything I should be worried about? Thanks in advance.

[NJ Patent1]

Sabachka;  Caveat, I'm a chem/pharma type, not CS.  I've touched 2 software patents in my entire career.  Got hives both times and am clueless as to what a FPGA is.  That said, I am aware of cases in which source code was not necessary if the person of ordinary skill in the art could write code to perform the function w/o "undue experimentation".  That seems to be the rub.  If anyone could write the code w/o much trouble, you should not need it.  On the other hand, if the code has some neat (patentable) "tricks" in it and these "tricks" aren't in the provisional, the claim to the benefit of the filing date  of the provisional could be called into question if there ever were a litigation.  If client is hell-bent on a provisional, I'd file it with what you have and follow up w/ a second provisional when you have the code.  I (releuctantly) follow an analogus approach in my art area. All the best. 

[dablueman]

It seems to me that by disclosing the code that I've disclosed any algorithms that might be claimed later. It also seems to me that the code is kept secret as the provisional is not published; it might only be revealed in litigation, where some kind protective order ought to be available. It could also be revealed in an interference and hopefully there is some sort of analog to protective order in those proceedings.

Any advice? Anything I should be worried about? Thanks in advance.

Sorry if this is abrupt but practitioners are suppose to know this basic information. In short, if you're claiming priority to the provisional then it's available upon request (and small fee) once either the PG Pub. is published or the patent is issued. The code is not secret.

37 CFR 1.14(a)(1)
(iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication of an international application that was published in accordance with PCT Article  21(2). An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title and filing date or other application specific information are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C.  119(e),  120,  121, or  365  in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, or an international patent application that was published in accordance with PCT Article  21(2). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request, and payment of the appropriate fee.

(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (h) of this section.


ON THE OTHER HAND, as is likely, if the inventive subject matter is really the algorithm implemented on the field programmable gate array then you're going to get popped by either the examiner (if they're on their game) or the defense attorney for enablement issues if you don't know what is going on and the spec doesn't enable a PHOSITA to recreate it (which is very likely if you don't know what is going on as you say).

Very few people actually read software application to get technical knowledge because they're never written anymore in language a person of ordinary skill in the art would use and rarely actually enable the invention. Evidently even fewer would know that you can get the provisional application with the payment of a small fee. On the other hand, a competent attorney for a competing software/hardware firm could potentially get the source code if filed with the provisional. This is the type of conversation to have with a client.


Disclaimer: The above is not intended to constitute legal advice and you should seek the advice of a competent attorney with a background in computer science.

[Isaac]

ON THE OTHER HAND, as is likely, if the inventive subject matter is really the algorithm implemented on the field programmable gate array then you're going to get popped by either the examiner (if they're on their game) or the defense attorney for enablement issues if you don't know what is going on and the spec doesn't enable a PHOSITA to recreate it (which is very likely if you don't know what is going on as you say).

While the above statement is absolutely correct, I cannot imagine any situation in which it would be necessary to disclose source code for an FPGA order to properly disclose the algorithm.   Block diagrams and flow charts with an appropriate level of detail are almost always sufficient.   The PHOSITA does not need to be able to recreate your exact FPGA in order to practice the invention. 

software applications ... rarely actually enable the invention.

In my opinion, the above is complete bullocks.

[Sabachka]

Thanks Dablueman for the cite. That makes sense that the provisional is available to the public. I did not know that. My practice has been to avoid provisional applications whenever possible.

ON THE OTHER HAND, as is likely, if the inventive subject matter is really the algorithm implemented on the field programmable gate array then you're going to get popped by either the examiner (if they're on their game) or the defense attorney for enablement issues if you don't know what is going on and the spec doesn't enable a PHOSITA to recreate it (which is very likely if you don't know what is going on as you say).

- I may not have been clear. Although I presently do not know what is going on the code, I would most certainly fully understand any algorithms embodied in the code before I drafted and filed a non-provisional application claiming priority to the provisional. A common criticism of provisional applications is that they don't enable the claims of the non-provisional. In this regard, the provisional may provide a false sense of security. In my situation, it may take a couple of months to get the code documented. In other words, it may take a couple of months before I can prepare either a provisional or non-provisional application that is fully enabled (unless I include the code).

The scenario I had in mind is file a provisional now, the provisional including the code to provide enablement. Then filing a non-provisional application in a couple of months. The non-provisional would not include the code. Rather, the non-provisional application would describe the invention or inventions with text, flow charts, and other diagrams in a manner sufficient to enable the claims.

As you point out, the price of this approach is disclosure of the source code. Obtaining a priority date 2-4 months earlier may well be worth the price. As you say, something to discuss with the client. I think this approach minimizes or eliminates the risk of "get popped by either the examiner (if they're on their game) or the defense attorney for enablement."

[Sabachka]

While the above statement is absolutely correct, I cannot imagine any situation in which it would be necessary to disclose source code for an FPGA order to properly disclose the algorithm.   Block diagrams and flow charts with an appropriate level of detail are almost always sufficient.   The PHOSITA does not need to be able to recreate your exact FPGA in order to practice the invention

Thanks Issac. I agree. I only want to disclose the code in the provisional because I am not presently do not have a sufficient understanding of the concept or concepts to prepare the block diagrams or flow charts. I plan to learn the concept(s), but it may take a couple months before the client can fully educate me.

[NJ Patent1]

Sabachka:  Tough situation.  Until the client "educates" you, your hands are tied.  It happens to me from time to time in a totally different art. But if you can't even sketch a flow chart of a method/process in any art?  Frome time to time clients ask me to "give them cover" for further development of an idea with a provisional untill they figure-out what the invention is .  Cover for what? Their R&D plan in case something hits?  Difficult client relations problem.  IMO: explain the brutal truth to the client and file what you've got and follow-up when you get more. 

[khazzah]

I only want to disclose the code in the provisional because I am not presently do not have a sufficient understanding of the concept or concepts to prepare the block diagrams or flow charts. I plan to learn the concept(s), but it may take a couple months before the client can fully educate me.

Sounds to me like you've pretty much admitted that without including source code for the FPGA, you won't enable the invention.

You didn't explicitly say there was a pressing need to file a provisional now rather than waiting until later when you can learn enough to enable without disclosing all the gory details in the source code. If you can wait to file the provisional until you have enough info to explain the invention at a higher level, that's a much better plan.

If the scenario was slightly different, and you indicated that you had some understanding of the invention at a high level, but just wasn't sure you had it right, I might recommend filing two provisionals -- one with source code, and one without. Then when you filed the utility application, you could spend more time with the inventor to get a good feel of whether your high level explanation in the provisional was in fact enabling. If your high level was good enough, you could claim priority to the no-source-code-provisional. If it wasn't you could claim priority to the source-code-provisional.

But in your situation, since you tell me you have no high level explanation whatsoever, I don't see what this approach would get you.

[khazzah]

I am not presently do not have a sufficient understanding of the concept or concepts to prepare the block diagrams or flow charts. I plan to learn the concept(s), but it may take a couple months before the client can fully educate me.

If the client insists on filing a provisional immediately, I would counsel the client to file another provisional when you do have a high level explanation. That way, if there are no problems with intervening use, sale or publication between the first and the second provisionals, you would have the option of filing a utility which left out the priority claim to the source-code-provisional.

[Sabachka]

Thanks, Khazzah. I suspect the pressing need to file a provisional comes from a business consultant advising the client.  Good question. After I made my original post I started to wonder about this. I will explore the "need" further with the client. I do have some idea of the concept. It is an improvement to the prior art, which I understand. I have a general idea (but perhaps incomplete) of the problems that the concept solves. You can think of the concept as a black box added to a prior art device. Where my understanding is weak is what is happening inside the black box. I think I have an idea of the kinds of operations it must perform, but no one can confirm.

I think your strategy of filing two provisional applications is interesting. But I think I will find out what the rush is to file a provisional. I know they plan to make some public disclosure or offer for sale in the near future. Maybe we can nail down the concept by then.