What Software Patent Applications Carry, Kind by Kind
Eighty-four kinds of content, counted across 32 US software applications and the 32 provisionals filed before them. Read the counts below, or download them as a checklist.
Read from 32 US software families, each a provisional and the non-provisional that followed it. Every count carries its own denominator: documents out of 32 for one document type, kinds out of 84, or rule records out of 41. Method and limits: how we read these filings.
Fifteen of 84 kinds of content appeared in all 32 non-provisionals, and eight in all 32 provisionals. Ten of the fifteen are engineering information, about the thing described; five are drafting material, about the document itself. Engineering kinds showed up in provisionals about as often as in the applications that followed: across those kinds, the two counts differ by a median of one document in 32. Where the two document types part ways is drafting material: claims, the benefit claim, and citations of other documents.
Advice about what an application should contain is easy to find. A count of what applications in fact contain is not. This page is that count, from one reading of 64 documents: 32 non-provisional applications and the 32 provisional applications whose benefit they claimed.
The reading sorted every passage into one of 84 kinds of content, from a vocabulary fixed before anything was counted. The kinds fall on two sides of a line that matters to anyone preparing material for an application. Engineering information is about the thing described: its parts, steps, data and the problem it addresses. Drafting material is about the document itself, its claims or its scope. Of the 84 kinds, 60 are engineering information and 24 are drafting material.
How to Read the Counts
- A count is of documents. “31 of 32” means 31 of the 32 documents of that type had at least one passage of that kind. Non-provisionals and provisionals are counted separately, each out of 32.
- One passage is enough to count. A document with a single definition counts the same as one with fifty. The counts say whether a kind was there, not how much of it, or how well it was done.
- Common is not the same as expected. A kind in all 32 documents is common practice in this sample. It is not a rule, and this page does not say any filing needs it. Where a rule names the same information, the rule is quoted in its own section below, kept apart from the counts.
- The vocabulary was built from eight of these families. Those eight were coded first with open labels, and the 84 kinds were built from their labels; their counts come from mapping each label back onto its kind. The other 24 families were coded with the 84 kinds directly. Counts of whole documents are less sensitive to how a reader divides text than counts of passages, which is why this page reports only the former.
How Common Each Kind Was
Most kinds appeared in more than half of each document type, so presence alone separates little. The bands below are the ones the study fixed before counting.
| Documents carrying the kind | Non-provisionals | Provisionals |
|---|---|---|
| All 32 | 15 of 84 kinds | 8 of 84 kinds |
| More than half, not all (17 to 31 of 32) | 57 of 84 kinds | 60 of 84 kinds |
| A quarter to a half (8 to 16 of 32) | 9 of 84 kinds | 13 of 84 kinds |
| Fewer than a quarter (7 or fewer of 32) | 3 of 84 kinds | 3 of 84 kinds |
In All 32 Non-Provisionals
Fifteen kinds appeared in every one of the 32 non-provisional applications. Ten are engineering information.
| Content | Non-provisionals | Provisionals | Rule linked |
|---|---|---|---|
| A shortcoming of existing practice | 32 of 32 | 32 of 32 | 37 CFR 1.71(c), MPEP 2106.05(a), MPEP 608.01(c) |
| Alternative ways or forms | 32 of 32 | 32 of 32 | MPEP 2161.01, one way |
| Definitions of terms | 32 of 32 | 32 of 32 | 37 CFR 1.75(d)(1) |
| What each part does | 32 of 32 | 32 of 32 | 35 U.S.C. 112(a), 37 CFR 1.71(b) |
| Background on existing technology | 32 of 32 | 31 of 32 | MPEP 608.01(c) |
| What the system is made of | 32 of 32 | 31 of 32 | 35 U.S.C. 112(a), 37 CFR 1.71(b), MPEP 2161.01, hardware, MPEP 2164.06(c) |
| Optional features | 32 of 32 | 30 of 32 | MPEP 2161.01, one way |
| The hardware or software it is built on | 32 of 32 | 29 of 32 | 35 U.S.C. 112(a), MPEP 2161.01, hardware |
| How the parts connect and communicate | 32 of 32 | 28 of 32 | 35 U.S.C. 112(a), MPEP 2164.06(c) |
| Method steps | 32 of 32 | 28 of 32 | 35 U.S.C. 112(a), MPEP 2161.01, algorithm, MPEP 2161.01, its form, 35 U.S.C. 112(f) |
The other five are drafting material.
| Content | Non-provisionals | Provisionals | Rule linked |
|---|---|---|---|
| A title | 32 of 32 | 32 of 32 | 37 CFR 1.51(c), 37 CFR 1.72(a) |
| Descriptions of what each figure shows | 32 of 32 | 32 of 32 | MPEP 608.01(g), 35 U.S.C. 113, 37 CFR 1.84(h), 37 CFR 1.74 |
| Statements that examples do not limit the scope | 32 of 32 | 32 of 32 | None linked |
| Claim openings (preamble and category) | 32 of 32 | 22 of 32 | 35 U.S.C. 112(b) |
| Dependent claim references | 32 of 32 | 16 of 32 | 35 U.S.C. 112(d) |
In the provisionals, eight kinds reached all 32: five engineering kinds (what each part does, alternative ways or forms, definitions of terms, a shortcoming of existing practice, and where the idea can be applied) and three drafting kinds (descriptions of figures, statements that examples do not limit the scope, and a title).
Fourteen of the fifteen kinds above are linked to at least one rule record, quoted further down. The exception is the statement that examples do not limit the scope. It appeared in all 32 documents of both types, and no rule record names it.
Where Provisionals and Applications Differ
For each kind, compare the two counts: how many non-provisionals carried it, and how many provisionals. Across the 60 engineering kinds, the median difference is one document, and the largest is seven. Across the 24 drafting kinds, the median difference is four documents, and the largest is 29. Every kind whose two counts differ by eight or more documents, seven kinds in all, is drafting material.
The table lists every kind whose counts differ by five or more documents. That cut is chosen for this table rather than derived; at it, 12 of the 15 kinds are drafting material and 3 are engineering.
| Content | Class | Non-provisionals | Provisionals |
|---|---|---|---|
| Related application data | Drafting | 30 of 32 | 1 of 32 |
| Docket numbers and other filing details | Drafting | 6 of 32 | 23 of 32 |
| Citations of outside documents | Drafting | 30 of 32 | 14 of 32 |
| Dependent claim references | Drafting | 32 of 32 | 16 of 32 |
| Claim openings (preamble and category) | Drafting | 32 of 32 | 22 of 32 |
| Claim limitations | Drafting | 29 of 32 | 21 of 32 |
| The structure of the claim set | Drafting | 28 of 32 | 20 of 32 |
| Adjustments to changing conditions | Engineering | 16 of 32 | 9 of 32 |
| Passages that restate content found elsewhere | Drafting | 29 of 32 | 22 of 32 |
| Reference numerals tying text to figures | Drafting | 26 of 32 | 20 of 32 |
| Statements that steps or parts may vary | Drafting | 25 of 32 | 19 of 32 |
| What a step operates on | Engineering | 24 of 32 | 18 of 32 |
| A drawback or trade-off | Engineering | 16 of 32 | 11 of 32 |
| Rules for reading the wording | Drafting | 29 of 32 | 24 of 32 |
| Statements about the drawings as a set | Drafting | 31 of 32 | 26 of 32 |
Some of this follows from how the sample was drawn and what each document is. Each non-provisional in the sample claims the benefit of the provisional before it, and in 30 of the 32 the text read carries related application data; 1 of the 32 provisionals did. Provisionals more often carry filing details such as a docket number or an inventor’s name. Claim kinds appear in provisionals partly because 13 of the 32 were filed as complete applications with a claim set, as described in what real provisional applications contain; the claim kinds also count claim-like numbered statements wherever they appear.
What Half or Fewer Carried
Twelve kinds appeared in 16 or fewer of the 32 non-provisionals. Ten of them are engineering information.
| Content | Class | Non-provisionals | Provisionals | Rule linked |
|---|---|---|---|---|
| Worked numerical examples | Engineering | 16 of 32 | 17 of 32 | MPEP 2164.01 |
| A drawback or trade-off | Engineering | 16 of 32 | 11 of 32 | None linked |
| Adjustments to changing conditions | Engineering | 16 of 32 | 9 of 32 | None linked |
| Priority or preference rules | Engineering | 15 of 32 | 13 of 32 | None linked |
| Decision points that choose a path | Engineering | 14 of 32 | 14 of 32 | MPEP 2161.01, algorithm |
| Risks and failure scenarios | Engineering | 14 of 32 | 13 of 32 | None linked |
| Operating modes or states | Engineering | 12 of 32 | 11 of 32 | None linked |
| Reports of building or testing it | Engineering | 11 of 32 | 11 of 32 | None linked |
| What happens when a step fails | Engineering | 10 of 32 | 9 of 32 | None linked |
| Docket numbers and other filing details | Drafting | 6 of 32 | 23 of 32 | None linked |
| Tables of values | Engineering | 6 of 32 | 6 of 32 | 37 CFR 1.58(a) |
| Means-plus-function wording | Drafting | 6 of 32 | 5 of 32 | 35 U.S.C. 112(f) |
A low count does not mark a kind as unimportant, and a high one does not mark it as expected. Some kinds can only appear where the invention has something to put in them: a worked numerical example needs numbers, and a report of testing needs a test. These counts describe what was there.
Where a Rule Names the Same Information
The study kept a separate set of 41 rule records, each quoting what the statute, the regulations or the MPEP says about what a filing contains. Before anything was counted, each rule was read against each kind’s definition to record which kinds carry the information the rule names. Of the 41 records, 28 are linked to at least one kind. Of the 84 kinds, 39 are linked to a rule and 45 are not. That link is a reading of the rule’s words, and it is open to dispute kind by kind.
A rule naming a kind of information says nothing about whether any particular passage meets the rule. That is decided on a specific application, and for many of these rules on its specific claims.
The quoted rules, with the kinds each is linked to
- 35 U.S.C. 112(a). “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same” (35 U.S.C. 112(a)). Linked kinds: what each part does; what the system is made of; the hardware or software it is built on; how the parts connect and communicate; method steps; what a data item or message contains.
- 35 U.S.C. 112(a), best mode. “shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention” (35 U.S.C. 112(a)). “[F]low charts or source code listings are not a requirement for adequately disclosing the functions of software” (MPEP 2161.01(II), quoting Fonar Corp. v. Gen. Elect. Co.). Linked kinds: how a step is carried out.
- 35 U.S.C. 112(b). “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” (35 U.S.C. 112(b)). Linked kinds: claim openings (preamble and category); claim limitations.
- 35 U.S.C. 112(d). “a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed” (35 U.S.C. 112(d)). Linked kinds: dependent claim references.
- 35 U.S.C. 112(f). “such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof” (35 U.S.C. 112(f)). Linked kinds: method steps; how a step is carried out; means-plus-function wording.
- 35 U.S.C. 113. “The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented.” (35 U.S.C. 113). Linked kinds: descriptions of what each figure shows.
- 37 CFR 1.57. “‘Essential material’ may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication” (37 CFR 1.57(d), as reproduced in MPEP 608.01(p)). Linked kinds: citations of outside documents.
- 37 CFR 1.58(a). “The specification, including the claims, may contain chemical and mathematical formulae, but shall not contain drawings or flow diagrams.” (37 CFR 1.58(a), as reproduced in MPEP 608.01). Linked kinds: calculation or mapping rules; tables of values.
- 37 CFR 1.71(b). “The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable.” (37 CFR 1.71(b), as reproduced in MPEP 608.01). Linked kinds: what each part does; what the system is made of; explanations of why it works; a comparison with other approaches.
- 37 CFR 1.71(c). “In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates” (37 CFR 1.71(c), as reproduced in MPEP 608.01). Linked kinds: a shortcoming of existing practice; which feature answers which problem.
- 37 CFR 1.72(b). “The purpose of the abstract is to enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.” (37 CFR 1.72(b), as reproduced in MPEP 608.01(b)). Linked kinds: a short overview of what it is and does.
- 37 CFR 1.73. “A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the detailed description.” (37 CFR 1.73, as reproduced in MPEP 608.01(d)). Linked kinds: a short overview of what it is and does.
- 37 CFR 1.74. “When there are drawings, there shall be a brief description of the several views of the drawings and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures, and to the different parts by use of reference letters or numerals (preferably the latter).” (37 CFR 1.74, as reproduced in MPEP 608.01(f)). Linked kinds: descriptions of what each figure shows.
- 37 CFR 1.75(d)(1). “the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description” (37 CFR 1.75(d)(1), as reproduced in MPEP 608.01(i)). “The use of a confusing variety of terms for the same thing should not be permitted.” (MPEP 608.01(o)). Linked kinds: definitions of terms; synonyms and alternative names.
- 37 CFR 1.78(a)(3). “must contain, or be amended to contain, a reference to each such prior-filed provisional application, identifying it by the provisional application number (consisting of series code and serial number)” (37 CFR 1.78(a)(3)). Linked kinds: related application data.
- 37 CFR 1.84(h). “The drawing must contain as many views as necessary to show the invention.” (37 CFR 1.84(h)). Linked kinds: descriptions of what each figure shows.
- 37 CFR 1.84(p)(5). “Reference characters not mentioned in the description shall not appear in the drawings. Reference characters mentioned in the description must appear in the drawings.” (37 CFR 1.84(p)(5)). Linked kinds: reference numerals tying text to figures.
- MPEP 608.01(c). “Where applicable, the problems involved in the prior art or other information disclosed which are solved by the applicant’s invention should be indicated.” (MPEP 608.01(c)). Linked kinds: a shortcoming of existing practice; background on existing technology; a technical field statement.
- MPEP 608.01(g). “Every feature specified in the claims must be illustrated, but there should be no superfluous illustrations.” (MPEP 608.01(g)). Linked kinds: descriptions of what each figure shows.
- MPEP 2161.01(I), the algorithm. “It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement.” (MPEP 2161.01(I)). Linked kinds: method steps; the order and timing of steps; what a decision or value is based on; how a step is carried out; calculation or mapping rules; decision points that choose a path.
- MPEP 2161.01(I), the form of the algorithm. “express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart” (MPEP 2161.01(I), quoting Finisar Corp. v. DirecTV Grp.). Linked kinds: method steps; calculation or mapping rules.
- MPEP 2161.01(I), hardware and software. “For computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software due to the interrelationship and interdependence of computer hardware and software.” (MPEP 2161.01(I)). Linked kinds: what the system is made of; the hardware or software it is built on.
- MPEP 2161.01(I), one way and every way. “[T]he description of one method for creating a seamless DWT does not entitle the inventor . . . to claim any and all means for achieving that objective.” (MPEP 2161.01(I), quoting LizardTech v. Earth Resource Mapping). Linked kinds: alternative ways or forms; optional features; lists of examples of a general term; specific numbers, ranges or limits; named types or variants; configurable settings.
- MPEP 2164.01. Linked kinds: illustrative examples; worked numerical examples.
- MPEP 2164.06(c). “it should not always be considered as self-evident how such components are to be interconnected to function in a disclosed complex manner” (MPEP 2164.06(c)). Linked kinds: what the system is made of; how the parts connect and communicate.
- Linked but not quoted here. 37 CFR 1.51(c) (linked to a title); 37 CFR 1.72(a) (linked to a title); MPEP 2106.05(a) (linked to a shortcoming of existing practice; a stated benefit or advantage; explanations of why it works; which feature answers which problem). This site quotes rule text only from its own statutory source files, and these three are not among them.
Rule text is quoted from this site’s statutory source files. Regulations other than 37 CFR 1.78 and 1.84 are quoted as MPEP 608.01 and its subsections reproduce them, and each citation names the subsection. Several of these rules concern claims and the sections of a non-provisional application. A provisional application is different: by 35 U.S.C. 111(b)(2), “A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.”
The Checklist
Engineering information
About the thing described. Each item is followed by how many of the 32 non-provisionals (N) and of the 32 provisionals (P) read for this page had at least one passage of that kind. A count describes that sample. It does not say what any filing needs.
The problem and its setting
A shortcoming of existing practice (N 32/32, P 32/32); background on existing technology (N 32/32, P 31/32); the need or goal the work addresses (N 31/32, P 29/32); where the idea can be applied (N 30/32, P 32/32); which feature answers which problem (N 26/32, P 26/32); an assumption the design relies on (N 23/32, P 20/32); a comparison with other approaches (N 22/32, P 20/32). Does your material say each of these? Skip any that do not apply to your idea.
What it is, what it gains, what it costs
A short overview of what it is and does (N 31/32, P 31/32); a stated benefit or advantage (N 30/32, P 28/32); a drawback or trade-off (N 16/32, P 11/32). Does your material say each of these? Skip any that do not apply to your idea.
The parts and what they run on
What the system is made of (N 32/32, P 31/32); the hardware or software it is built on (N 32/32, P 29/32); how the parts connect and communicate (N 32/32, P 28/32); which part or party performs each operation (N 29/32, P 27/32); where it is deployed and what it relies on (N 28/32, P 24/32); how many of an element there may be (N 25/32, P 22/32); how items are arranged or ordered (N 17/32, P 14/32); operating modes or states (N 12/32, P 11/32). Does your material say each of these? Skip any that do not apply to your idea.
What the parts do, and when
What each part does (N 32/32, P 32/32); what starts an operation (N 31/32, P 30/32); what an operation produces (N 28/32, P 29/32); what happens under a given condition (N 28/32, P 27/32); exclusions and exceptions (N 23/32, P 24/32); fixed rules or limits on behaviour (N 20/32, P 21/32); adjustments to changing conditions (N 16/32, P 9/32). Does your material say each of these? Skip any that do not apply to your idea.
The steps
Method steps (N 32/32, P 28/32); the order and timing of steps (N 31/32, P 31/32); what a decision or value is based on (N 29/32, P 28/32); how a step is carried out (N 27/32, P 23/32); loops and nested procedures (N 18/32, P 14/32); priority or preference rules (N 15/32, P 13/32); decision points that choose a path (N 14/32, P 14/32); what happens when a step fails (N 10/32, P 9/32). Does your material say each of these? Skip any that do not apply to your idea.
The data and the values worked out from it
What a data item or message contains (N 31/32, P 31/32); where data comes from, is kept and goes (N 28/32, P 25/32); what a step operates on (N 24/32, P 18/32); data formats and structures (N 23/32, P 22/32); what a value or result means (N 22/32, P 20/32); links between data items (N 21/32, P 17/32); calculation or mapping rules (N 20/32, P 20/32); quantitative relationships (N 17/32, P 17/32); tables of values (N 6/32, P 6/32). Does your material say each of these? Skip any that do not apply to your idea.
Other ways, options and values
Alternative ways or forms (N 32/32, P 32/32); optional features (N 32/32, P 30/32); lists of examples of a general term (N 31/32, P 31/32); specific numbers, ranges or limits (N 24/32, P 26/32); named types or variants (N 21/32, P 22/32); configurable settings (N 19/32, P 23/32). Does your material say each of these? Skip any that do not apply to your idea.
Terms, properties and reasons
Definitions of terms (N 32/32, P 32/32); what a part or step is for (N 30/32, P 30/32); explanations of why it works (N 30/32, P 27/32); properties of an element (N 29/32, P 30/32); when an effect holds (N 25/32, P 24/32). Does your material say each of these? Skip any that do not apply to your idea.
Examples and results
Illustrative examples (N 31/32, P 29/32); worked numerical examples (N 16/32, P 17/32); reports of building or testing it (N 11/32, P 11/32). Does your material say each of these? Skip any that do not apply to your idea.
What a person sees and does
What a person does (N 23/32, P 22/32); what the interface shows or collects (N 22/32, P 22/32). Does your material say each of these? Skip any that do not apply to your idea.
Failure and safeguards
Safeguards and mitigations (N 20/32, P 16/32); risks and failure scenarios (N 14/32, P 13/32). Does your material say each of these? Skip any that do not apply to your idea.
Drafting material
About the document, its claims or its scope rather than the thing described. Counts as above: N is non-provisionals and P is provisionals, each out of 32.
Claims
Claim openings (preamble and category) (N 32/32, P 22/32); dependent claim references (N 32/32, P 16/32); claim limitations (N 29/32, P 21/32); the structure of the claim set (N 28/32, P 20/32); means-plus-function wording (N 6/32, P 5/32). Does your material say each of these? Skip any that do not apply to your idea.
Scope and reading language
Statements that examples do not limit the scope (N 32/32, P 32/32); the forms it may take (method, system, medium) (N 31/32, P 28/32); statements about the drawings as a set (N 31/32, P 26/32); rules for reading the wording (N 29/32, P 24/32); synonyms and alternative names (N 27/32, P 27/32); statements that features may be combined (N 25/32, P 22/32); statements that steps or parts may vary (N 25/32, P 19/32); statements about what a skilled person knows (N 23/32, P 20/32). Does your material say each of these? Skip any that do not apply to your idea.
Document apparatus
A title (N 32/32, P 32/32); descriptions of what each figure shows (N 32/32, P 32/32); citations of outside documents (N 30/32, P 14/32); related application data (N 30/32, P 1/32); statements of how the document is organized (N 29/32, P 28/32); passages that restate content found elsewhere (N 29/32, P 22/32); cross-references within the document (N 28/32, P 28/32); statements that two elements correspond (N 26/32, P 26/32); reference numerals tying text to figures (N 26/32, P 20/32); a technical field statement (N 21/32, P 20/32); docket numbers and other filing details (N 6/32, P 23/32). Does your material say each of these? Skip any that do not apply to your idea.
What This Does Not Decide
- It does not say what any application or provisional needs, or what a patent office will accept. A count of documents is not a rule.
- It does not say that any passage supports any claim. Written description and enablement are decided on specific claims against a specific disclosure.
- It does not rank the kinds. A kind in all 32 documents is not more valuable than a kind in 10.
- It is 64 documents from 32 families of US software filings, in one reading. It is not a survey of US practice, and it says nothing about other technologies.
Educational, not legal advice. What a particular filing should contain is a question for a registered patent practitioner.
Related
- How we read these filings, the sampling, the definitions and the limits
- What real provisional applications contain, four forms, and what later applications made explicit
- What patent applications contain, section by section
- Three requirements in one sentence, the text of section 112(a)
- When a drawing is required
- Technical Description Checklist, twenty quality signals to check a description against
- Idea disclosure template, for capturing the engineering information in your own words
Scope. This checklist describes what 32 US software applications and their 32 provisionals carried, in one reading. It does not say what any filing needs, and finding a kind in your own material is not a judgment about that material. Rules differ by country.
Disclaimer. This checklist describes observed content of published patent filings for informational and educational purposes only. It is not a substitute for advice from qualified intellectual property counsel. Use of it does not constitute legal services or legal, patent, patentability, drafting, filing-strategy or deadline advice, and does not create an attorney-client relationship with Obviously Not. Intellectual-property protection can be time-sensitive: public disclosure, product release, open-source publication, sale, offer for sale, demo, or other external sharing may affect available rights. You are solely responsible for consulting qualified intellectual property counsel about any legal or IP issue.