SOURCE: Wolf, Greenfield & Sacks

April 13, 2005 09:46 ET

Startups Can Win at the Patent Game, Wolf Greenfield's Gates Tells Academics

Avoiding Pitfalls and Building a Dominant Patent Portfolio

AMHERST, MA -- (MARKET WIRE) -- April 13, 2005 -- Scientists and engineers looking to commercialize a new technology are often so focused on their own patents that they neglect to learn what other patents have already been applied for or issued -- a mistake that can doom a venture, Edward R. Gates of the IP law firm Wolf, Greenfield & Sacks, P.C. told the "Invention to Venture" workshop at University of Massachusetts.

"If you don't pay attention to the competitive intellectual-property landscape, you may find out too late that you don't have the freedom to do things that are fundamental to creating your business," he said.

Entrepreneurs who don't discover blocking patents until they're already out raising funds can quickly lose the confidence of their potential backers, Gates added.

While a patent prevents others from stealing an invention, it does not give the owner the right to make, use or sell the invention. "That's a common misperception," said Gates, a shareholder with the firm.

A startup company should seek to develop a dominant patent portfolio by obtaining patents that protect company's products and also block others from using the company's technology. "Patents can block specific competitor products and provide protection in key markets. With a dominant portfolio, you put your company in a position to negotiate from strength," he said.

Invention to Venture is a program of the National Collegiate Inventors and Innovators Alliance with sponsorship from The Lemelson Foundation and the Kauffman Foundation.

Founded in 1927, Wolf Greenfield in Boston is one of the nation's most experienced law firms specializing in intellectual property law, including patents, trademarks, licensing agreements, copyrights, trade secrets and related litigation. Web:

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