Include optional features or not?

[ryanhn]

What is the name of your state (only U.S. law)? Massachusetts

When doing a Provisional Patent application for a method of operation is it better to be as detailed as possible including optional features or should I only include the absolute basics needed to describe the process and its workings in order for it to function so as to broaden the scope of the patent? My understanding is that within the application you can specify which steps could be done differently or eliminated altogether and still have the process function. Does that mean optional features that I'd like to have protected as well but aren't essential can/should be included in the general description but so long as I specify that they're optional and the process doesn't require them that the general process without the optional features will be protected as well as the more detailed process including them?

[divgradcurl]

Originally Posted by ryanhn

What is the name of your state (only U.S. law)? Massachusetts

When doing a Provisional Patent application for a method of operation is it better to be as detailed as possible including optional features or should I only include the absolute basics needed to describe the process and its workings in order for it to function so as to broaden the scope of the patent? My understanding is that within the application you can specify which steps could be done differently or eliminated altogether and still have the process function. Does that mean if I include optional features that I'd like to have protected as well but aren't essential can/should be included in the general description but so long as I specify that they're optional and the process doesn't require them that the general process without the optional features will be protected as well as the more detailed process including them?

The specification doesn't describe the patented invention -- the claims do. The usual practice is to provide details of any of the different ways of practicing the patent in the specification, and then you have different groups of claims, some directed at the broadest patent, others covering more specific, and narrower, implementations.

You will want your provisional to be as detailed as possible to avoid any questions about "new material" later on.

Another reason to add the details in the specification is if you claim broadly, and those claims are rejected, you can only narrow the claims if the narrower interpretation is supported by the specification -- so having enough detail in the spec to provide the ability to narrow an overbroad claim is also good practice.

[ryanhn]

Thank you for the reply. So then I should include everything in the specification, non-essentials and all, and then I can make a claim on the basic system and then additional claims on the add-ons, in which case some of the claims may be rejected but others could still be approved? My understanding from what I've read online is that the claims are actually made in the utility patent application, not the provisional. Is that correct, or should I spell out my claims in the provisional as well?

[divgradcurl]

There is no requirement for claims in the provisional. Many practitioners, though, make it a practice to write claims for a provisional in order to ensure that the specification is sufficient to support the intended claims. Sometimes it can be hard to predict what exactly you might need in the specification until you actually draft the claims.

Actually, as a rule, most practitioners actually draft the claim set first, then draft the specification to support the claims -- even for provisionals. Might sound backwards, but oftentimes its the easiest way to go about it.

One other issue -- if you intend to file either a PCT app or a foreign application that claims priority to the provisional, or if you want to make sure that you preserve the option to file in a foreign patent office, you will want some claims in your provisional.

[ryanhn]

Thank you so much for the information. If you don't mind a couple more follow-up questions, I've taken your suggestion and begun drafting the claims and I'm working on the flow chart for the patent drawing requirement simultaneously since I think better visually. Having read up a bit on drafting claims I think I understand the concept of making a broader claim and then following that with narrower claims, and that in the specification I'm supposed to specify all the different ways that the invention (method in my case) can work. Is it advisable to specify the different variations as separate narrower claims, and to what degree should the different variations be represented in the artwork? I'm considering creating more than one flow chart so I can illustrate the different variations separately so as to avoid ending up with one flow chart that's somewhat ambiguous as a result of trying to account for all possibilities in one swoop, but I have no idea if that's necessary or even appropriate. I don't want to mistakenly dilute my claim by offering too many different scenarios if that were possible.

Also, if I include the claims in my provisional patent application can I later add additional claims in the utility patent application so long as the details to support those claims were already laid out in the specification for the provisional? I'm hoping to have the funds to hire a patent attorney for preparing the utility patent application, so I don't want to restrict the claims by including them in the provisional if they can't be later added to should an attorney recognize in the specification any additional claim(s) that could have been made that I missed.

[divgradcurl]

Is it advisable to specify the different variations as separate narrower claims, and to what degree should the different variations be represented in the artwork?

Yes. In the event that your broader claims are not allowed by the PTO, it's important to have narrower claims that can be allowed so you don't end up with no patent at all.

Is it advisable to specify the different variations as separate narrower claims, and to what degree should the different variations be represented in the artwork?

Yes, and to whatever degree you think is appropriate. If the narrower (more specific) embodiments can be understood by looking at the broader flowchart and reading the specification, then you probably don't need a separate drawing for each different embodiment.

Also, if I include the claims in my provisional patent application can I later add additional claims in the utility patent application so long as the details to support those claims were already laid out in the specification for the provisional?

Yes.