Provisional patents for software and AI inventions
How to describe a software or AI invention in a US provisional so it can support eligible claims: the technical improvement, the algorithm, the data, and who counts as the inventor.
The eligibility question
Software claims fail in the US when they are directed to an abstract idea without an inventive concept (Alice Corp. v. CLS Bank, 573 U.S. 208 (2014)). Claims that improve how a computer or technical system works have been held eligible (Enfish v. Microsoft, Fed. Cir. 2016). A provisional cannot argue eligibility for you, but it must describe the technical improvement, or no later claim can rely on it.
What to describe
- the technical problem and how your approach changes what the system does: speed, memory, accuracy, energy, security;
- the architecture: components, data flow and interfaces, with a block diagram;
- the algorithm itself, step by step, with a flowchart. A claim written as a function ("means for ranking") is limited to the structure the description discloses, and for software that structure is the algorithm (35 U.S.C. 112(f); Williamson v. Citrix, Fed. Cir. 2015);
- variants and alternatives you may want to claim later: other models, data sources, thresholds, orders of steps.
AI and machine-learning inventions
- describe the inputs, the outputs, the model type and how it is trained, what data it learns from and how that data is prepared, and how the trained model is used;
- give concrete parameter ranges you actually used rather than invented ones (see what an AI draft invents);
- only natural persons can be named as inventors (Thaler v. Vidal, Fed. Cir. 2022). A person who used AI is an inventor if they contributed significantly to the conception of each claimed invention (USPTO inventorship guidance for AI-assisted inventions, February 2024).
Drafting with iPatent
Using a drafting tool does not make the tool an inventor: inventorship turns on who conceived the invention, not on who typed the description. iPatent structures the description and maps every draft claim element to the paragraph that supports it, which is where software provisionals most often fall short. Have a registered practitioner review a software provisional before you rely on it.
Draft a disclosure, freeSee a real run
More guides