Provisional Patent Scope Strategy As I understand it the rigor required of a provisional patenta is less than that of a non provisional patent. A US provisional patent is to be filed this month for a device and I would like to understand if there is a disadvantage / penalty if the claims / description is too: 1) Narrow: the concern here is that if the device description is very detailed, then any required evolutions to the device between provisional and the non provisional utility patent may be invalidated when opened. 2) Broad: the concern is that non provisional patent is invalidated because claims are too broad (not specific enough) and jeopardize the foundation and filing of the non provisional patent. If it is possible that either of these scenarios can jeopardize the non provisional patent, how does one go about honing one's judgement of whether the scope (claims) are in the 'Goldilocks' zone: not too broad, not too narrow? Any examples are appreciated: Thank you
As I understand it the rigor required of a provisional patent [application] is less than that of a non provisional patent. While this is true in a sense, there is a lack of nuance here. Provisional patent applications are not examined for formalities. Generally, this is interpreted as being able to omit claims. However, if you're really wild, you can even use a different page size. However, a provisional still needs to be treated during the drafting stage as if it were a non-provisional. This is because the provisional needs to be able to support the non-provisional. Notably, while you do not need to file claims with the provisional, you should still have claims drafted for use in the non-provisional. This is because the description of the provisional needs to be able to support the claims of the non-provisional. If you insufficiently describe your invention in the provisional, it will be as if you never filed the provisional: it will be useless and you'll have lost a year of priority. For this reason, it is not entirely accurate to say that the rigour of a provisional is less than that of a non-provisional patent application. Merely, the filing formalities and fees are lower. What is the risk if the provisional is too narrow? You will not have an earlier priority date for anything not described in the provisional. If you provide in your provisional that your invention must have features X and Y, then you would likely not have support in the non-provisional for your invention just having X alone. So be careful with what you describe as essential (as indeed you would with a non-provisional). That said, if you avoid suggestions that features are essential, and take care to describe broader embodiments as potentially standalone, more detail is always better. What is the risk if the provisional is too broad? The risk is that the provisional will inadequately describe your invention. Claims in the non-provisional will therefore not be entitled to the benefit of the filing date of the provisional. Intervening prior art will therefore deprive your claims of novelty. How do I get in the Goldilocks zone? Dale M's suggestion of hiring a patent attorney, while flippant, is certainly the right answer. But in general, more detail is better. As long as you describe your invention in its broadest embodiment without optional features, then describe each further embodiment while noting that the added features are beneficial but optional, you should be fine. Although this makes for a dull drafting experience, it makes for a strong provisional.
The page &quot;States Where Holographic Wills Are Legal&quot; from legal zoom lists some 26 united-states states in which holographic wills are valid, plus 9 more that will recognize such wills when they are written elsewhere. Beyond that, some states consider a holographic will valid for only a limited time, such as one year, after its date. The idea seems to be that a holographic will is supposed to be for emergency situations, when there is no opportunity to have a will drafted and witnessed in the usual way. Under the common law, holographic wills were valid, if they met a few requirements, such as being entirely in the handwriting of the testator. This satisfied the legal principle that the law &quot;favors testacy over intestacy&quot;. But such principles never prevail over specific statutes, and the states that disallow holographic wills have generally done so by statute. Holographic wills can be harder to prove, cause court contests, and can perhaps be more subject to fraud, or legislators may have thought so. In any event, they have been made invalid in many jurisdictions. My understanding is that in a state that does not recognize a holographic will, a will not properly witnessed will often be ignored in favor of the legal heirs, that is those who would inherit if there were no will. I am not at all sure about the case where there are no legal heirs, and the state would inherit in the absence of a will. Perhaps there probate judges have more discretion. Examples I could not find much caselaw or many news reports about holographic wills, and no case where there were no heirs-at-law, and the alternative was for the estate to go to the state (escheat), although some sites mention the possibility. It seems that few cases dealing with holographic wills are not only brought to court, but appealed so that published opinions on them can be found. The page &quot;New York Holographic Will&quot; (from a law office site) says: A holographic will is a unique type of will that will only be considered valid if it is made under certain extreme conditions. In all other circumstances, a holographic will will not be valid and will not be probated. If this happens, then your estate will be treated as if you died without leaving a will. In New York if you do not leave will your estate will be disposed of according to the laws related to intestate succession. NY EPTL § 4-1.1. ... If you die leaving only a holographic will and the court determines it to be invalid, then there is a possibility that your property will end up in the hands of New York state. If you are not survived by any relatives, then your property will escheat to the state. The page &quot;Handwritten wills can translate into probate problems&quot; says: In one Arizona case, a partially typed and handwritten document was invalidated. A grandmother’s wishes were tossed aside, and her granddaughter did not share in her legacy. Ther page &quot;Holographic Will Florida&quot; (From a lawyer's blog) says: Holographic wills are invalid in Florida and therefore your assets will pass according to the Florida Intestacy Statute. Your assets located in the State of Florida will pass by the Florida Intestacy Statute even if you validly executed your holographic will in another State that allows holographic wills and then you later move to Florida. ... Finally, if there is nobody that applies, meaning you have no family at all, the property will escheat (transfer) to the State of Florida. The *National Law Reviewe article &quot;Court Holds That Holographic Will Was Not Valid As There Was No Signature&quot; says: In In the Estate of Hohmann, the decedent died without leaving an executed will, but his caretaker found a hand written document wherein the decedent stated his wishes for his property. No. 04-20-00237-CV, 2020 Tex. App. LEXIS 9216 (Tex. App.—San Antonio November 25, 2020, no pet. history). ... The court held that the hand-written document had not been signed and was not valid: Here, we see no evidence in the written instrument indicating that Raymond intended the phrase “R. Hohmann Estate” to serve as his signature. In the case Estate of FRANCES BURNS BLACK, Deceased. (L.A. No. 31280. Supreme Court of California. March 1, 1982.) Richardson, J. wrote: Where, as here, there is no conflict in the evidence, &quot;'the validity of the holographic instrument must be determined entirely by reference to the applicable statutes and principles of law.' [Citations.]&quot; (Estate of Baker (1963) 59 Cal. 2d 680, 683 [31 Cal. Rptr. 33, 381 P.2d 913].) Unanimously in Baker, we stressed that &quot;The policy of the law is toward 'a construction favoring validity, in determining whether a will has been executed in conformity with statutory requirements' [citations].&quot; (Ibid.) Moreover, we affirmed &quot;'the tendency of both the courts and the Legislature ... toward greater liberality in accepting a writing as an holographic will. ...'&quot; (Ibid.) &quot;'Substantial compliance with the statute, and not absolute precision is all that is required. ...'&quot; ... In construing section 53 we bear in mind the primary legislative purpose of the holographic will statute which was identified by us in Estate of Dreyfus (1917) 175 Cal. 417, 418-419 [165 P. 941], as the prevention of &quot;fraudulent will-making and disposition of property&quot; by virtue of the recognized difficulty of forging an entire handwritten instrument. ... As noted by Professor Osborn: &quot;An extended holograph ... is perhaps the most effective means of proving practical execution, even more than witnesses, and the law relating to holograph wills recognizes this fact. ...&quot; (Osborn, Questioned Documents (2d ed. 1929) p. 682 ... Our liberal statutory interpretation and emphasis on &quot;substantial compliance&quot; expressed in Baker has been well understood, for there have been few reported decisions subsequent thereto which have adopted the hypertechnical application of section 53 to holographic wills which we disapproved in Baker. ... No sound purpose or policy is served by invalidating a holograph where every statutorily required element of the will is concededly expressed in the testatrix' own handwriting and where her testamentary intent is clearly revealed in the words as she wrote them. Frances Black's sole mistake was her superfluous utilization of a small portion of the language of the preprinted form. Nullification of her carefully expressed testamentary purpose because of such error is unnecessary to preserve the sanctity of the statute. Moreover, rejection of the instrument as a will would have the unfortunate practical consequence of passing her estate through the laws of intestacy to the daughter of her predeceased husband by a former marriage -- in fact, a stranger to her -- thereby excluding those whom she described in the holograph as &quot;my very dear friends&quot; and &quot;my adopted family&quot; and the charity which was apparently close to her heart and which she specifically wished to benefit. In the case of Wilson v. Polite 218 So. 2d 843 (1969) JONES, Justice wrote: It was alleged in said petition that the said writing was not valid in law as a will, because it did not comply with Section 657 of the Mississippi Code of 1942 Annotated (1956) in that it was not subscribed by the said Clara Thompson. ... The sole question is whether this instrument constitutes a holographic will. No person has an inherent or constitutional right to make a will disposing of his property. Such is a privilege extended to the citizens by the State. 94 C.J.S. Wills § 3, p. 680 (1956); ... It is a requisite to a valid will that it be executed as prescribed by statute. ... No matter how earnestly one may desire and intend to make a will, a paper, although fully intended by the writer to be a will, is ineffective and invalid unless its execution meets statutory requirements. The purpose of statutes prescribing formalities for the execution of wills is not for the purpose of restricting the power of testator to dispose of his property, but it is to guard against mistakes, impositions, undue influences, fraud, deception, etc., which would divert the property of the testator from those intended by him or her to inherit same. The formalities are for the testator's protection also, as well as the beneficiaries'. ... We have before us here what is claimed to be a holographic will. To be such it must be executed in accordance with the specific requirements of the statute. It must be laid on the table beside the statute to determine whether its execution is in accord therewith. If it is not executed as provided by the statute, it is not a will, regardless of the intention of the alleged testator. ... An instrument offered as a holographic will must be a complete and executed document, although absolute precision of execution is not necessary, and all that is required is a clear showing on the face of the instrument of its execution in conformity with the law. ... In summary, the court has construed the statute regarding holographic wills to mean (1) it must be signed at the end of a document, testamentary in character, which shows on its face that the testamentary purpose therein expressed is completed, (2) nothing which follows the signature may be considered, (3) if the writing does not meet the requirements of the statute the intent of the writer is immaterial. The part of the document in question which precedes the signatures thereon fails to show on its face that the testamentary purpose was completed. On the contrary the purported signatures appear in the middle of a sentence. ... No where is there a court authorized to make a will for any decedent and that is exactly what we would be doing if we said we were going to strike out those words in this instrument which keeps it from being a will. (There was a strong dissent in this case, which I omit.)
If I make a working prototype and upload it on youtube will it prevent others from getting a patent on the idea? Generally yes. If the core information is accessible to the public, it becomes &quot;prior art&quot; and cannot be patented anymore by someone else. That includes you. Depending on local legislation, you have a small time window to apply for a patent (after disclosure) but if you don't, it's public domain and everybody is free to use it. If it's mainly code, you may be able to upload to Github and attach a license to it but that offers only limited protection. Globally? That depends on local legislation which there are too many of, to answer this here.
The connector is patented, as you see here. It contains 57 claims which define what is protected, and 35 USC 116 spells out the logic of claims (which, in a nutshell, says "this can get really complicated"). The set of claims defines what it patented, and infringement is defined in 35 USC 271 as whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent that is, there isn't anything statutorily more specific about how similar similar is. Since the claims define what is protected, this generally is taken to refer to things that are the same w.r.t. to all of the claims. "Generally" means that there is a doctrine of equivalents, exemplified by Warner-Jenkinson Co. v. Hilton Davis Chemical Co. 520 U.S. 17, whereby a court may find infringement when there is an insubstantial difference between the allegedly infringing thing and the protected invention. The Apple patent does not specify a specific number of millimeters between the contacts, so making a connector that is exactly the same as the Apple device (as marketed) but with different spacing on the connectors would be an infringement, because that spacing is not specified in a claim. A similar device that uses chewing gum rather than magnets to keep it together would not likely be found to be infringing since that is a substantial divergence from what Apple claims it has invented.
It's a fact that anyone can sue anyone in civil court for anything, including patents and Intellectual Property rights. Have you read about Patent Trolls? See Patent troll - Wikipedia and patent trolls - Google Search. You could possibly be sued for patent infringement even after being granted a patent for your own invention, because the judgement whether a patent is sufficiently unique and different from any other given patent and can be subjective at times. That's the wiggle room the patent trolls use to sue. They go to court in an attempt to convince the court that the patent office erred and they deserve damages for infringing on their patent and profits. And the court could rule on damages or court costs, and possibly to relinquish profits or pay for losses that a third-party suffers. Specific legal advice is off-topic on Law SE. So the best thing to do is get real legal advice about the patent process and prior art searches, and, after your patent is granted, what you may have to deal with if you get a C&amp;D letter or are taken to court for infringement.
I've answered this in the context of US patent law, but similar principles apply elsewhere in the world. As stated in 35 USC 271, "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent". Thus, a patent provides the patent owner with the right to exclude others from performing these actions, and the right to sue anyone who does perform these actions (both to stop them from infringing the patent, and to collect monetary damages for their infringement). Creating an infringing product and then licensing it under the GPL (or any other scheme) does not change the fact that it infringes a patent. 35 USC 271 also states that "Whoever actively induces infringement of a patent shall be liable as an infringer". This means that, even if the creator of the infringing product does not perform any infringing acts in the US, the act of offering it for free use could be construed as induced infringement of the patent, and they could still be sued for that infringement.
"Providing on-demand services through use of personal computing services" is a preamble of a patent claim. In the case of one Uber patent, US9230292, claim 1 starts with A method for providing information about an on-demand service on a computing device, . . . The preamble tells the reader what the claimed invention does; the rest of the claim (300+ words in this case) tell the reader the steps it takes in doing it. Two patented inventions can produce the same result and a method could produce the result promised in the Uber preamble but do it without performing all of the steps in the Uber claims, and therefore not infringe the patent.
Venue The location where you file the claim is the court that will hear it unless: you both agree the judge orders a different venue based on submissions from the parties (unlikely in a small claim) Costs Costs awards in small claims are rare and generally do not extend to the legal fees and if they do, the amount is capped. Costs for reasonable expenses of witnesses are slightly more common. In general, costs are limited to what is reasonable - to get the costs of travel and accommodation for the Liverpool solicitor, the party would have to argue that there was no available equivalent representation available locally. This might be arguable if you need a QC expert in say, international maritime law, it seems unlikely for a small claims matter. Personal Comment Don't go to court for £100 - settle the damn thing or walk away. In the time and worry you spend on it you could earn that sum five times over.