Cast.app's first patent and software patents in general

Cast is now patented 🎉

We filed a provisional patent before we started Cast and a non-provisional patent a year ago in the middle of the pandemic right before we were accepted into Techstars.

We just got the patent approval on July 13!

This patent is my Co-founder, Daljeet, and Cast's first Patent. 🎉 And my tenth.

Cast's first patent covers the ability to mass-create and distribute Cast video presentations generated from customer account data and insights. The Cast Video Presentations are simultaneously played like videos and explored like dashboards and interactive charts. Insights are explained, making it easier to drive and capture actions directly in Casts.

Generative video content or cast video presentations are personal to every individual at a customer account. They are either hosted on the web and linked from customer-facing portals and dashboards for active product users or distributed using various push mechanism distribution channels, including email, SMS, Messages, Slack, Microsoft Teams, and direct messages. They can also be queried in real-time and distributed in a chatbot to live customers.

The patent also covers smart-skip and smart-rewind to ensure skips and rewinds do not land in the middle of a narrative sentence, along with several other innovations.

I wrote about generative technologies or machine generated content (MGC) and how it differs from user generated content (UGC) and professionally-generated content earlier.

This article is not about the Cast patent

In this article, I'll cover Software patents, how early-stage startups can file patents on a startup budget with speed and accuracy, and why it is still a good idea to file software and Software as a Service patents.

Do software patents mean anything?

Yes, they do.

Ignore people who tell you otherwise. They are citing the Alice Corp. vs. CLS Bank ruling.

MasterCard acquired a patent I wrote for several million dollars — transacted well after the Alice/CLS ruling. There are some caveats to follow when writing patents. For SaaS providers patent the service which includes the software, is a better idea.

US Patent: US 8,959,143 B2
‍Issued: February 17, 2015
‍Assigned to: Mastercard
‍Authors: Dickey B. Singh, et alii.
‍Title: "Methods, systems and computer readable media for enabling a downloadable service to access components in a mobile device"
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The patent is the basis of downloadable content, e.g., cards in a digital wallet and how downloadable content can access device hardware, e.g., device camera, NFC, secure element, bluetooth, accelerometer, etc.

The Alice Corp. vs. CLS Bank ruling changed how we must write software patents.

Software-based inventions are still patentable in the United States.
However, for software patents to be eligible, patent applications must meet specific technical requirements and be written carefully.

Writing patents on a startup budget

My previous patents cost $20K-$27K. They were quite involved and my employer graciously paid for them.

The Cast Patent was filed as a provisional patent even before we started Cast. So, naturally, we wanted to keep the budget to a minimum.

My approach was to make the drawings and write the provisional patent draft, claims, detailed description, abstract, summary, etc. and then hire a US-based practicing attorney to use that as a starting point. My reasons for writing the draft provisional patent myself were as follows.

• First, to get a better end-to-end handle of what we were building,
• Second, to give the patent attorney a concrete, usable draft describing the invention.
• Finally, we wanted to save money along the way — which is always the case with everything entrepreneurs do — balancing saving money while being mindful of time.

We selected the Mastercard-acquired Patent as a starting point to write a new provisional patent.

We also took help from the internet extensively, specifically, the simple Stanford Provisional Patent Template, PatentFile templates, and several google searches for each section.

However, we deliberately ignored sites that had pre-Alice-CLC-ruling information.

Structure of the provisional patent

Based on research, we added the following to our provisional patent application for a software service.

Style

Paragraph Numbering

Number all paragraphs using the "continue numbering from previous section" feature.

Do not number a list as it is considered a part of the paragraph under which it appears.

Likewise, do not number Paragraph or section headers or titles.

Font and size

Write the content in Arial, Times Roman, or Courier, preferably with a font size of 12. We preferred Arial instead of Times Roman, as serif-based fonts do not work well on non-retina displays.

More from the USPTO site:

• Lines that are 1 1/2 or double spaced;
• (ii) Text written in a nonscript type font ( e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inches) high, but maybe no smaller than 0.21 cm. (0.08 inch) high ( e.g., a font size of 6); and
• (iii) Only a single column of text.

Page Header and Footer

We used the following page header and footer.

Page Header:

United States Patent | | Provisional Utility Patent Application

Page Footer:

Shortened title | Page x of y | <Primary Inventor Name> and 2 more

Content

Title

Centered on top of the first page, usually one line to a couple of lines.

We made the title uppercase in line with all the patents we had seen.

SERVICE, SYSTEM, AND COMPUTER-READABLE MEDIA FOR…

Abstract

A single paragraph with a couple of sentences that include a conceptual and high-level description of the patent filing should satisfice.

Summary

Add a few paragraphs providing a brief overview of your invention, describing the what and how. What the invention does, and how it works.

We ended up with five numbered paragraphs with 1-3 sentences in each paragraph.

Technical Field of Invention

Ideally, include two paragraphs describing the field in a broad sense in the first paragraph and more specifically in the second paragraph.

Artwork Index

The Artwork Index is a descriptive list of artwork included in provisional filing if you have more than two drawings.

We ended up with five detailed drawings and included an index with five paragraphs providing an overview of each labeled figure.

Background

The background supposedly describes the problem and how similar inventions solve the problem.

For me, it served to describe the current problems with existing solutions and how they work partially. We originally wrote a longer detailed description and later divided it into an extensive background and detailed description section upon review.

We ended up with 11 paragraphs in this section.

Detailed Description

The detailed description is the meat of your patent, other than the substance, i.e., claims. It has multiple numbered paragraphs that reference artwork by block number and figure number. E.g., Block 100 in Figure 2

We included every detail of the invention and shared processes and workflow steps. Since specificity matters, more information shared could mean preventing someone from copying.

We ended up with 17 paragraphs for the detailed description.

References

We cited similar patents in this section, and for each patent, we described differentiations and limitations of how they lack in solving the problem.

There are many ways to cite patents. We chose to write them and expected the lawyer to fix the citations.

• Author names separated by comma
• Title in quotes,
• Patent number with issue date, e.g. US 1,234,567 B2, issued April 29, 2019,
• Description of Patent and why it does not solve the problem my patent invention is addressing

Claims

In the [provisional] patent filing, all the content is "sizzle," and the claims are the "steak."

Claims define the invention, i.e., what it is and what it does.

Claims have to be broad for wide protections and are specifically used to protect the invention.

Claims, although not required in a provisional patent application, are strongly recommended.

According to Upcounsel this section is the hardest to write. BTW, UpCounsel owns the SEO, so look beyond the first few pages of search as always for the more helpful content.

According to Upcounsel, Claims is the hardest section to write.

Ideally, start with a broad claim and write additional claims narrowing the original one.

We ended up with 11 claims in the provisional patent and expected the patent attorney to modify and or edit this section heavily.

Artwork

We included five drawings in black and white printable format, with all components labeled. We made the drawing in Keynote because we work on a Mac and iPad almost equally.

As an example of a patent drawing, this is undoubtedly a favorite one. An exploded burger patent drawing. Source.

Colored Artwork

Colored drawings are possible but require a special petition with additional fees.

For example, this provisional patent has colored drawings at the end, but the ones in the issued patent are black and white.

Finding a lawyer

After writing the draft provisional patent, it was time to find an attorney to review and edit the document and drawings.

I reached out to lawyers I had worked with before. They ranged from helping write for free to writing it for a small fee and equity. None were, however, available to work and finish the provisional patent in under two weeks.

Meanwhile, we posted on Fiverr to gauge interest. We got many replies with fees ranging from $350 – $700, but none of them would share a patent they had worked on as a reference.

We figured we needed to work with a practicing US lawyer.

Here is my UpCounsel post:

I need a practicing US lawyer to work on my provisional patent application. I will provide the drawings and a draft patent with claims written by me, an entrepreneur. I have eight patents and have relied on professionals in the past, but I wanted to write this myself as I am doing this for a new startup. Hopefully, this will serve to jump-start the application.

The provisional patent is a software service, and I need the legalese to be correct, robust, and defensible in the future. The goal is to create multiple patents, eventually using this patent as the basis.

I am looking for proposals for 1) reviewing, editing, and updating what I have completed 2) submitting it to USPTO on my behalf.

I can get on the phone to explain the details. I'll start reaching out to proposals shortly.

Thanks,
Dickey

We got seven proposals in the first 24 hours, ranging from $63 for a two-hour consult to $3,000 for writing the patent, with filing and patent search for an additional charge. After talking to a few people, we realized the ones offering one to two-hour consult wanted to do a side business outside the UpCounsel platform. Maybe that is why UpCounsel went out of business.

One lawyer wrote an enormously long message, telling me why we shouldn't write a provisional patent myself. He is probably right, but it seemed like he was interested in a side deal outside the UpCounsel platform and something we were unwilling to try.

A few lawyers offered a "lower" price in addition to equity. But their "lower" price was higher than several other bidders.

Hiring a Lawyer

We ended up talking to a Patent law professor from Texas we found on a couple of sites. He was an active attorney and we selected him because,

• His messages were concise and to the point.
• He said he would work on the patent himself when I asked him who would work on the provisional patent.
• The lawyer insisted on doing a patent search and for free.
• Pricing was reasonable. The lawyer was neither the cheapest nor the most expensive.
• The business reviews on several platforms were good.
• He was responsive in his messages and offered a draft in 2-3 days compared to others who offered 15-30 days.
• In startup life, 15 days is eternity.

Edits & Modifications

The lawyer made several changes to the order in which we had written the patent. He used the entire content we had written without modifications but added legal language and made the claims more generic.

He also asked us to renumber the drawings to make the numbering less ambiguous. We also added step-by-step instructions on the various processes per the lawyer's request.

Provisional Patent

Here is the final order of content the provisional patent application we filed.

BACKGROUND

1. Field of the Invention
2. Description of Related Art

SUMMARY

DESCRIPTION OF THE DRAWINGS

DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENT

Claims

ABSTRACT

The following Documents were attached with the provisional patent application:

1. Drawings in black and white (6 pages)
2. Power of Attorney (1 page)
3. Certification of Micro Entity (Gross Income Basis, 2 pages)
4. Provisional Cover Sheet (SB16, 3 pages)
5. Specification (the actual content of the provisional patent, 22 pages)
6. Fee Worksheet (2 pages)

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We also received an Electronic Acknowledgement Receipt including the following:

1. EFS ID,
2. Application Number,
3. a Confirmation Number,
4. a RAM Confirmation Number.
5. timestamp of submission.

Additional Provisional Patents

As soon as we submitted the provisional patent, we got many additional ideas based on feedback from other entrepreneurs I met at conferences and meetings.

Unfortunately, you cannot modify a provisional patent. We, therefore, chose to add several items in a continuation patent that we filed on the same day as the issuance of the patent, July 13.

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