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Question about filing a PPA for a micro-controlled apparatus: I've drawn up several different drawings showing the "states" of the device, and I verbally described the "IF" and "THEN" logic decisions, but I have not drawing a logic diagram. Would a logic diagram be recommended for this type of PPA?

[khazzah]

Question about filing a PPA for a micro-controlled apparatus: I've drawn up several different drawings showing the "states" of the device, and I verbally described the "IF" and "THEN" logic decisions, but I have not drawing a logic diagram. Would a logic diagram be recommended for this type of PPA?

By "logic diagram", you mean a block diagram with labeled boxes?

Personally, I let the kind of invention/app drive what kinds of diagrams go into an app. Thus, I might end up using one or more of

• flow chart
• timing diagram
• block diagram of either software or hardware/logic components
• state diagram
• data flow diagram
• object diagram

If a bunch of labeled boxes showing internal components of your inventive logic helps to explain how it works, then I would include such a diagram.

To cover your bases, you might also add a very simple diagram of the apparatus and the control logic. Could be as simple as two boxes and a line connecting them. Such a drawing does nothing to further explain the invention. But if you plan to claim the apparatus, it's probably a good idea. I've blogged a couple of times about case where the Applicant got into trouble for not having a drawing that illustrates every claimed feature.

[JimIvey]

I'll just tease out a subtlety in Karen's post.  Notice that she discussed applications and not particularly provisional applications.

The reason is that applications, whether provisional or real, are measured by the exact same legal standards.  Unless you fully understand all the subtleties of provisional patent applications (and many professional practitioners don't), you're shooting around your feet -- if you don't actually shoot yourself in the foot, it's just a matter of dumb luck.

Regards.

[fb]

I guess then the question would be, would a provisional with only drawings of the device, and verbiage of the logic, suffice to anticipate someone else from patenting same device with same logic, without the application having to include logic diagrams.

I just was not sure if logic diagrams were mandatory for logic applications or not, the way diagrams per se are mandatory for device applications.

[khazzah]

I just was not sure if logic diagrams were mandatory for logic applications or not, the way diagrams per se are mandatory for device applications.

Hmm.  There is no legal distinction between "logic applications" and "device applications". Or even "logic claims" and "device claims".

To be more specific, I know of no statute, rule, or case law that says "diagrams of type A are required for apps of type A and diagrams of type B are required for apps of type B." In my experience, Examiners don't even follow such a rigid [unwritten] rule.

The statute ($112) requires drawings "where necessary for the understanding of the subject matter to be patented." The rule (1.181) expands on this just a bit by saying "Drawings may include illustrations which facilitate an understanding of the invention (for example, flow sheets in cases of processes, and diagrammatic views)."

That's all the law requires.

In practice, chemical and bio cases tend to have either no drawings or very few. [Makes sense -- how would you draw a picture of a chemical compound or of a DNA sequence?] Mechanical cases tend to have lots of CAD drawings with exploded views and tons and tons of parts. Electronics and computer cases tend to have a mixture of flow charts and block diagrams.

But the above are merely typical. Maybe even typical enough to be called  best practice. But not required by law.

[JimIvey]

I guess then the question would be, would a provisional with only drawings of the device, and verbiage of the logic, suffice to anticipate someone else from patenting same device with same logic, without the application having to include logic diagrams.

So, you only care about defensive publication and don't need patent rights yourself?

If so, a provisional application won't help you.  They're never published unless you follow up with a real application claiming priority.  Even then, it won't serve as a defensive publication as of its filing date, only as of its publication date.  It can act as prior art, but only if the description supplies priority for a claim in the real application, and that depends on the particular drawings and verbiage, measured by the same legal standard by which the real application is measured.

I suppose you could self-publish whatever you file as a provisional application, e.g., by posting it on the web.  Then it would work as prior art, perhaps for your own application as well to the extent the provisional fails to provide priority for your claims -- more of a risk outside the US.

If I understand your purpose for filing a provisional application rather than a real application, I don't believe your provisional application will serve that purpose.

As for whether to include a logic drawing, just do it.  As Karen carefully explained, what's absolutely required for a patent application is really hard to say.  Including too much in an application is usually not harmful -- assuming you don't shoot yourself in the foot with the added material.  Including too little is fatal to the application.  So, it's better to be over-inclusive rather than under-inclusive.

Regards.

[khazzah]

As for whether to include a logic drawing, just do it.  As Karen carefully explained, what's absolutely required for a patent application is really hard to say.  Including too much in an application is usually not harmful -- assuming you don't shoot yourself in the foot with the added material.  Including too little is fatal to the application.  So, it's better to be over-inclusive rather than under-inclusive.

I certainly agree that it's a good idea to err on the side of more disclosure rather than less. But this doesn't address the finer issue of what's the right "mixture" of text and diagrams. [A topic which I find interesting, so I'll expand on it.]

OP said:

drawn up several different drawings showing the "states" of the device, and I verbally described the "IF" and "THEN" logic decisions, but I have not drawing a logic diagram.

I read [in between the lines] this as saying that he felt he was enabling and showing possession of the invention, ie, that one of ordinary skill in the art would understand what was invented and how to build it.

IMHO, adding a block diagram with two boxes labeled "engine" and "controller" and arrows in between doesn't contribute at all to enablement or written description.  The *only* thing it does is reduce the risk of getting a drawing objection. And if you have a sentence in your spec that says "The logic described herein controls fuel flow to an engine", then you could even add the drawing later if necessary without running afoul of new matter.

Now, it's really fast/cheap to add such a simple diagram, so maybe it's a no-brainer and you should always include it. Nonetheless, it rubs me the wrong way to fill a patent application with what I feel is useless stuff.

BTW, OP, I still don't know what you mean by "logic diagram". Care to elaborate?

[NJ Patent1]

Jim: "Even then, it won't serve as a defensive publication as of its filing date, only as of its publication date."  Is  "defensive" a typo?  I always, right or wrong, equate "defensive" with "defending" my pending app against alleged prior art, not asserting it against someone.  Maybe poTAtoe, potAHtoe (I learned to spell fron VP Dan Quayle).  Thanks for correction re: 102(e).  I've had this wrong idea that a published US app claiming benefit of a provi was 102(e) art as of the provi's filing date (fortunately never agrued it, I misconstrued or over-extended 119(e)(1)).

Anyway, a small but maybe useful point.  The quantum of WD (let's not go there!) and esp enablement - in words or figures - required in a prior art reference to defeat a claim is less than the quantum required to support the same claim.  So if fb's app published, they might indeed "defeat" somebody else's claim, even if they couldn't get the same claim allowed . Why one would take that route instead of an easier cheaper one? Dunno.

Karen: "how would you draw a picture of a chemical compound"  Don't mean to be too glib, but ChemSketch(R) and ChemDraw(R) come to mind.  In the bad old paper-and-ink days I used a K+E template.  Seriously, in the chem arts we do it (draw chem structures in the claims) all the time. 

[fb]

Logic diagram: A boolean map with and-gates, etc. I'll draw a simple one as mentioned and include it.

I like the reminder that a provisional, if not drafted well enough to support subsequent NPA claims, may anticipate that NPA.

Actually I probably do mean to enable, so as to follow up with an NPA. So the specification will be thorough.

[khazzah]

Karen: "how would you draw a picture of a chemical compound"  Don't mean to be too glib, but ChemSketch(R) and ChemDraw(R) come to mind.  In the bad old paper-and-ink days I used a K+E template.  Seriously, in the chem arts we do it (draw chem structures in the claims) all the time. 

I read chemical apps from time to time, and and I do see chemical structures in the claims. But I don't recall seeing *Figures* in chemical apps. Am I right about that?

So now I'm curious. At first I said "how do you draw a chemical compound" in order to support my statement that chemical apps don't generally have figures. But since drafters can and do draw compounds, why is it that it's not in a "Figure"?