Urgent - My Patent Application received a Non-Final Rejection, Advice?

Question

I have written a computer program which combines two patented ideas, but provides a new and much needed function, and service for that matter. Hence the big money corps stand to make from the use of my program/idea.

The examiner said the idea is an abstract idea, and the program is merely instructions to implement it. He then states that "it would have been obvious to a person or ordinary skill in the art to modify the inventions of the two inventions, I unknowingly combined, to create my invention."

Fact is, not that it means that much, I have letters from 2011 asking a fellow associate to help me write this program. With all avenues exhausted, I learned how to write the program myself and submit it to the patent office. I see the problem presented time and time again from all kinds of sources, so if it's so obvious, why hasn't anyone done it? We're talking billions of dollars in revenue here, so I know I am the only one who's come up with this invention/idea. Or plain and simple they would be providing the service to customers and collecting the cash. ;D

So I guess I have 2 questions for you:

1. How do I convince the examiner that the functionality of the program, which provides an improvement to the existing patents, should be given a patent?

2. If not, how can I present my idea to companies and get a fair percentage of the money? And they will be making money indefinitely from the service my program will enable them to provide!

My thoughts are to hire a patent attorney, while it's still patent pending, and go directly into the potential corporations.

Any advice would be Greatly Appreciated as the patent is in the examiners hands.

Sincerely,

Dave

Answer 1

Hire a professional.

1) Neither question you ask can be answered with the information you gave, and even if you posted your application I doubt anyone would be willing to wade through it to give you an opinion for free. You have no idea how much effort what you are asking for requires, or what level of detail in the information you supply is required to answer these questions.

2) You have no idea whether your invention qualifies for a patent, and you also do not understand the law or legal concepts involved. I am not generalizing; I can tell by your post.

3) Even if your idea is patentable, if it is an improvement on a patent still in force, you may not be able to use or sell your invention without first obtaining a license from the owner of the patent which you improved on.

4) It appears that you have no knowledge of intellectual property or licensing, but you mention the "big money corps stand to make from the use of my program/idea" and "we're talking billions of dollars in revenue here." I am pretty sure that you have no idea how to value your IP, if you have any IP to value. You need professional assistance with this - everybody does, it's hard. I doubt anyone would value an application which may not even issue as a patent, for a computer program which you are not currently using in industry, in the billions of dollars.

5) Last, it is premature to talk about getting an attorney and going straight to the corporations. First, get a professional's opinion on whether you can get a patent for your invention at all. If you wrote the application yourself, it may be that no useful protection can be obtained for your invention.

This is because a patent application is a very technical legal document. If you try to get a company to buy your idea or to take a license, they will want to see the application or patent (that is what they would be paying for). If the application is weak, they will probably know immediately and be free to take your idea without paying you.

Good luck.

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Edit: You stated below that "I only made one mistake in my application, and it was an important one. In my claims, I used a feature that I was unaware had a patent. A patent attorney would have probably caught that, and not included it as a main Claim. So, I will most likely have to go through this whole process again."

This is probably not true!

1) Get Patent It Yourself by David Pressman and study it. (You can buy a copy, or maybe get it from your library.) This is a great introduction to the patent system - you will learn a lot.

2) Call the Examiner and ask for suggestions, or conduct an interview if you're close to the USPTO. Explain that you're a little guy, and ask for their help.

Software patent applications are tricky - again, good luck.

Answer 2

Thanks Aldo for your reply.

I wish i could hire a professional, but I am at one of the points in life where so many other things have taken the funds I would need to do so.

Everyone has "A million dollar idea," so I answer your statement that I may have no idea how to value my IP, if you have any IP to value. You are right only that it may not be my IP to value. Fact is, I have had a million product ideas, can't help myself, but this one is easy to value.
Here's why I know we are talking Billions, and I would just like a small percentage of that huge pie for coming up with this service. Say 5 cents on the dollar? Sure I could make an App, which is what this idea started out as. But then it hit me that I could write the program so it could be added to ANY Operating System, and managed by service providers who will charge a monthly fee.

Even though I've heard a cry for my service from so many users and for so many different types of devices running operating systems, we will narrow this estimate to cell phones for now.

Here's the math: According to http://www.statista.com/statistics/278204/china-mobile-users-by-month/ In China alone, about 1.29 billion mobile users had been registered In February 2015.

Let's assume the provider charges a modest $1.00 per month for my service. Let's just say only 1% of users subscribe, and pay for it. That's $12,900,000 a month to a provider for doing nothing really, the program does the work. That's $154 Million a year in china alone, imagine the world. Not to mention any device with an OS.

Getting a license from the original patent owners is good advice. I was surprised to find that the co. that owned it, was my main target in the first place. Their patented invention doesn't have anything to do with their business, only that the people they hired came up with the idea so they patterned it. I was just adding a feature to my program, and it turns out they own the patent. The feature does not affect the function or results of my service however.

If you are an inventor reading this, I highly recommend taking the time to get a patent attorney. So lucky are the corps. that the average genius doesn't have the money to implement their ideas. I share your pain and frustration. I could not afford an attorney, nor could I meet with any because I live on an island with not one patent lawyer. During my interview with the examiner, he said that he was surprised at how well my application was put together. He also thought that I was a patent lawyer at first. lol I owe it all to the U.S.P.T.O. and their incredible staff. They are there to help you, and act like it! They made it easy for me because I followed their instructions.

I only made one mistake in my application, and it was an important one. In my claims, I used a feature that I was unaware had a patent. A patent attorney would have probably caught that, and not included it as a main Claim. So, I will most likely have to go through this whole process again. In my mind it was only a feature and I was focused on Searching for any similar programs that may have a patent. I did not find any programs like mine, so I felt confident enough to file. In addition, I advise you to act on your idea TODAY, as the prior art that is probably going to prevent me from getting it this time around, did not have a patent when I came up with this idea years ago.

I can only imagine how much money could have been made if my service would have been provided when I first thought of it. It makes me sad that a person can come up with an idea that would make so much money for others, and not even get paid a tiny little percentage.

This is really eating me because It is my 2nd Billion dollar idea, and I just don't see how I can make money from it other than an app.
It deserves more than an app because that's a quickie and I figured out the way to make it a monthly service, which equals big money for everyone...indefinitely!

So, Aldo if you made it this far, I know you are a skeptic when it comes to Big Money Claims. And you are probably asking what was this other billion dollar idea that I missed out on? Well, I launched Youtube one year before "Youtube" existed. I didn't know what I had at the time, and didn't think broad enough either. I still own the site today but haven't done anything with it. When I checked https://archive.org/web/ I had launched the site 15 months before them. I didn't see the profit potential and let that one slip through my hands.

I don't want it to happen again! Thanks all for listening and I wish you all the best of luck, Don't Give Up!!!

P.S. Sorry, I know this site is for asking questions. Moderators please leave this comment up so that other inventors can maybe benefit from my advice and see that we all go through the agony trying to cut even the smallest sliver of the huge pie we bake.

Answer 3

For question 1) you need to check which combination of existing disclosures are preventing your application to be registered. Find what is unique in your idea that other didn't think about. Answer to the office action for each section. One at the time and within the delay given to you. For question 2) Do not approach companies if your idea is not protected by a grant. Or else they can use the idea for free.