Saratoga Business Journal, August, 2006
Company Helps Ordinary, Everyday People Get Patents For Useful Items They Create
BY SAM LUDU
Jim Chang, president of Chang's Pressure/ Posture Health Products in Saratoga Springs, recently filed a patent application for his specially cushioned orthopedic chair, which he says uniformly distributes a person's weight across the entire supporting surface to prevent bedsores from developing at various pressure points on the body.
Ken Monroe of Argyle, a truck driver and carpenter, was recently issued a patent for his hand-held, barbell-shaped flotation device, which can be used as an exercise tool in therapy to strengthen a person's muscles, or simply as a swimming aid.
Like a growing number of inspired entrepreneurs in the Capital Region, both inventors turned to Gerald F. Dudding, president of GFD Patents LLC in Clifton Park, for help in securing patent protection.
According to Dudding, the process "confers on the inventor the sole right to make, use, sell, or license his or her invention in the United States for 20 years from the date of filing the patent."
A patent agent admitted to practice before the U.S. Patent and Trademark Office (USPTO), a graduate of Albany Law School, and a Ph.D chemist, Dudding brings all of his skills and experience to bear in patent preparation, filing, and prosecution. His firm, founded in October 2005, specializes in several technology areas, including biotechnology, chemical engineering, chemistry, environmental technologies, food processing, agricultural pest control, pharmacology, and innovative tools and sports-related inventions.
"We can prepare and file a U.S. patent application that maximizes the value of your invention at reasonable cost," said Dudding.
Dudding emphasized that he wants to encourage "ordinary, everyday people" who have crafted relatively simple but highly useful devices.
"I want people to know that they can get patents for fairly common tools. It doesn't have to be something only a big company can produce."
Whether attempting to obtain a utility patent, design patent, or plant patent for a client, Dudding begins the extended process with a free consultation with the prospective patent applicant.
"The best way to understand the invention, " Dudding said, "is to let the inventor talk."
Dudding asks questions to help the inventor further define the scope of the device and informs the inventor of the USPTO's own criteria for patentability, including what can and cannot be patented. The consultation, said Dudding, "can take as much time as it takes to capture the broadest embodiment of the invention."
The next step is conducting a patent search, an examination that identifies prior art that may be used by the USPTO to support reasons for rejecting the claims of the patent. Dudding subcontracts this work to former patent examiners who are given access to the USPTO's own computers. A search covers both U.S. and foreign patents and applications and can take up to three weeks. Its length, Dudding said, "depends on how rich the area is for invention," with searches in the electronics and pharmaceutical areas usually taking longer.
Typically, 10 to 15 patents are discovered to be close but not exactly similar to an invention in question. Dudding then prepares a patentability opinion, which is included in the fee for the patent search, a step that often again involves the inventor.
"We invite our inventors to come in for a one-on-one discussion about the prior art that has been identified in the search and distinguish their invention from the prior art, Dudding said, "so our inventors come away from the discussion with an idea of what is their broadest patentable invention."
By understanding the prior art involved, Dudding and the inventor can answer the key questions: What hasn't been disclosed yet? What features of this new invention can be claimed as being novel?
The decision whether to proceed with preparing and filing the application, said Dudding, "may be based on our estimate of the cost of preparing and filing the application balanced against the inventor's estimate of the profitability of the invention."
If Dudding and the inventor agree that invention's prospects look favorable, they then collaborate on meeting the USPTO intricate filing and application requirements, which include an oath signed by the inventor signifying that the invention is his or her own.
The relevant USPTO form for that type of patent, known as the transmittal letter, outlines what must be supplied in the claims. A crucial separate document details the claims and the specifications that support the claims, which include writings and drawings. In addition, Dudding sends the USPTO a self-addressed postcard that, when returned, verifies that the agency received the requisite documents and has established the filing date.
Dudding files virtually all of his patent applications electronically, a process that reduces the filing fees for his clients and usually expedites patent prosecution. Dudding said the USPTO has "greatly improved its electronic filing system since March 2006" and now offers a 24 hour help desk to answer questions.
As complex as application filing can be, many inventors still choose to do it themselves, at their own peril.
"If you, for example, forget a drawing in the specification, you're screwed," said Dudding. "You can file the drawing subsequently, but the filing date is delayed." And most inventors, according to him, "don't know that they need to provide a drawing for every structure they claim."
USPTO can take from one to three years before it examines the claims of a patent application. The examiner mails back an office action, which details the reasons for either allowing or rejecting the claims in the application. If there is a rejection, Dudding consults with the inventor to prepare a response, which must come within three months.
Dudding and the inventor also have the option of directly contacting the examiner about the reasons for the rejection and to help the examiner understand the disputed claims. If the examiner eventually rejects the application, Dudding and the applicant have four basic options. They can decide not to proceed further. More likely, Dudding will call the examiner directly to discuss the contentious claims in the hope of securing an examiner's amendment that will allow the application, or he will submit a request for continuation, that along with new filing fees, will prompt the examiner to reconsider the application and perform another patent search.
If Dudding feels the examiner is in error, and there's no chance of an expeditious resolution, he can start the appeals process.
Dudding said he will do whatever it takes, for as long as it takes, to help his applicants secure the patent protection they need in often very competitive technological areas.
"It's what I mean by my motto, `Personalized Service for Entrepreneurial Inventors.'"
Dudding can be reached at 368-4157. His web site is www.gfdpatents.com.