Do-It-Yourself Pate

Contact: WPI Venture Forum, +1-508-831-5075

You have an idea. It may be a new product or a new process, or perhaps a new feature or improvement for an existing product or process - yours or a customer's or a competitor's. You want to know if your idea may be patentable. After all, applying for a patent is a typical first step to licensing an invention or preventing competitors from copying the new product or improvement or otherwise exploiting its commercial value.

You already know that to be patentable an invention must be new and not obvious in view of prior technology, the so-called "prior art." The prior art includes publications both here and abroad, products that have been sold or offered for sale, and other activity in the past. Even for a single, well-defined invention (and they seldom are in the beginning), searching all of the prior art could be a lifetime career. So where do we draw the line? Can we do a sensible amount of prior art searching within a reasonable time and expense budget? And where do we start?

If you don't have a corporate patent department to handle the task, you might consider using a patent law firm. Often, however, the best first step is a do-it-yourself search using one or more free on-line resources. Evidence that your invention has previously been described in publications by others - or the implication that it hasn't based on the lack of such evidence - may be found using public search engines, such as AltaVista, Google, etc. But in the event you ever file a patent application for your invention, the body of prior technology that will be primarily relied upon by an examiner in the United States Patent Office assigned to examine the patentability of your invention will be the issued patents and published patent applications of the U.S. and foreign countries.

Before deciding whether to file a patent application, and even before consulting with a patent attorney, you can search the same U.S. and foreign collections of issued patents and published applications from the comfort of your home computer or any computer with internet access. Altogether, there are millions of such issued patents and published applications.

We'll go on-line together during the Venture Forum meeting (the internet gods permitting), visiting the U.S. patent office web site and maybe even one or more foreign patent office web sites, using on-line patent search functions. With audience participation, we'll attempt to develop an on-line search strategy and then execute that search strategy to test the potential patentability of a proposed "invention." Maybe we will discover the next new thing!

Peter McDermott works with technology-based businesses to obtain and enforce patents and other intellectual property rights, both domestically and internationally. McDermott's practice focuses on coordinated licensing and litigation of intellectual property rights, in support of competitive market position. His broad licensing experience includes preparing and successfully negotiating patent licenses and other technology transfer agreements covering technologies, such as polymer coatings, glass fabrication, fiber optics and plastic molding. McDermott has handled licensing and due diligence studies in support of acquisitions, divestitures and corporate joint ventures of U.S., European and Asian corporations. McDermott's experience includes in-house counsel at Ford Motor Company. He earned his J.D., with honors, from Suffolk University Law School in 1978. He earned his undergraduate degree in chemical engineering at Worcester Polytechnic Institute, where he has served as an executive board member and past chair of the WPI Venture Forum. Currently, McDermott is a partner with the patent law firm of Banner & Witcoff. He can be reached at and 617.227.7111.

Case presenter

i-Ray Technologies, Inc.
Geva Barash
Executive vice president sales and marketing
Phone: 508-881-9041
Fax: 508-881-0318
Cell: 617-835-3552

Are you looking for a way to extend your wireless reach and stand out from the crowd? Geva Barash, executive vice president of sales and marketing for i-Ray will explain how his company can provide solutions to those problems. i-Ray develops wireless location and positioning technologies to transform resource management by delivering far-reaching read-ranges, highly accurate 3D-positioning, web-based remote systems management and open and scaleable platforms.

i-Ray's products are designed for high volume usage in harsh industrial conditions. The company offers a complete technology solution that includes EXACT Passive Tags and LongReach Active Transponders, a Base Processing Station (BPS), antenna systems, function-rich software and an internet provider (IP) communications platform that enables complete Real Time Location Solutions (RTLS). i-Ray's products can be easily integrated into any third-party software product in order to provide a holistic solution.

Barash oversees sales and marketing activities as well as day-to-day operations for the company nationally with plans eventually to expand globally. Barash's present role also includes developing a nation-wide distribution network, creating relationships with end-users and designing a comprehensive customer support network.

Before joining i-Ray, Barash served as the vice president of sales and marketing for NUR America, Inc., where he supervised sales and marketing activities in North and Latin America for machines and consumables. Through his experience and insight, Barash increased sales by more than 400 percent, contributing to the company's 800 percent jump in stock during this time period.

Barash also served as sales director for Idanit USA, Inc. During his tenure, he was responsible for all sales in North and Latin America, as well as the introduction and marketing activities of new products, building the company's direct sales and distribution channel to support new product launches and other company growth initiatives.

About the WPI Venture Forum

The WPI Venture Forum was created in 1990 to promote the entrepreneurial spirit and to serve those who engage in technology- based entrepreneurial enterprises by providing advice, support and education tailored to meet their needs. The forum fosters entrepreneurship through such activities as monthly programs, a business plan contest, a weekly radio show on News Radio WTAG (Saturdays, 5-7 pm, 580am), and a monthly newsletter.

The Venture Forum, as part of the Collaborative for Entrepreneurship & Innovation in the Department of Management at WPI, serves individuals who are seeking to begin their own technology-based businesses; founders, presidents, and senior managers of start-up or early-stage companies; senior managers of companies that are restarting or making a transition for one mode of operation to another; and employees leaving large companies due to a reduction in force or to start businesses.