Tootsie Rolls to Biotech--75 Years of Intellectual Property for Boston Law Firm Wolf Greenfield.

Business Editors

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Icons like Tootsie Roll and Burton Snowboards have turned to Wolf, Greenfield & Sacks, P.C., a Boston law firm founded 75 years ago, to protect their invaluable intellectual property--their patents, trademarks, and trade secrets.

For Tootsie Roll Industries Inc., intellectual property is as important as sugar. Because the company, at Wolf Greenfield's recommendation, had trademarked its distinctive orange-and-brown wrapper, it was able to stop a competitor from using a copycat wrapper.

Founded as a one-person law practice in 1927 by Ezekiel Wolf, Wolf Greenfield has grown to become one of the largest intellectual property law firms based in New England, serving companies that make everything from snowboards to biotech drugs to electronics to water- purification systems. In 2001 alone, Wolf Greenfield filed 1430 patent applications and 810 trademark applications and secured intellectual property rights in 129 countries for its clients.

"We're often at the cutting edge of intellectual property law," says Managing Partner Edward R. Gates. "Almost a decade ago, when everyone was saying you can't patent a business method, we were saying you can."

That theory was tested in a landmark case, State Street Bank & Trust Co. vs. Signature Financial Group Inc. With a trial strategy shaped by Wolf Greenfield, Signature won a Federal Appeals court decision establishing that business methods can be patented. Since that 1998 decision, thousands of business-method patent applications have been filed, Gates says.

The firm's clients are often at the cutting edge of technology. Wolf Greenfield wrote a patent application on spec for a 23-year-old Harvard Medical School dropout with a brilliant idea--a new method of rapidly sequencing DNA. "His idea was so unusually compelling we decided to represent him simply on the hope he'd be successful," Gates says. The entrepreneur was recently featured in Scientific American.

Humble Beginnings

It all began in May 1927 when Ezekiel Wolf set up his patent law practice in Boston. His first client was Reginald Fessenden, a Thomas Edison disciple who was first to transmit voice across the Atlantic. "The firm was dad and my mother, Ray, who was the secretary," says David Wolf, a shareholder in the firm.

After graduating from Harvard Law School in 1952, he joined his father and soon had to take over when Ezekiel was disabled by a stroke. In 1955, George L. Greenfield joined David Wolf in what soon became a formal partnership. The third name partner, Stanley Sacks, joined the firm in 1961 and practiced 40 years until his death last January at age 68.

"We were so-called patent lawyers. The fancy title of intellectual property hadn't been invented," Greenfield says.

The fledgling firm gained national notice by winning the precedent-setting Aro Convertible Top case, in which the U.S. Supreme Court defined for the first time when a product could be repaired without infringing a patent covering the product. By 1960, the firm had four lawyers. Today, Wolf Greenfield has more than 70 lawyers, patent agents and technology specialists.

"We partner with innovative entrepreneurial people to help them succeed," Wolf says. Over the years, Wolf Greenfield (www.wolfgreenfield.com) has worked with many New England startups that became giants, including Radio Shack, Digital Equipment, Au Bon Pain, Safety 1st, Burton Snowboards, and L.L. Bean. It also serves nonprofits such as renowned universities and medical institutions that patent their inventions and new technology to reap licensing income.

Turning Scientists into Lawyers

To develop scientist-lawyers, the firm pioneered a technology specialist program in the mid- 1980s, since adopted by other firms in Boston. Under it, the firm hires people with science or engineering degrees who work at the firm as technology specialists while attending law school at night. Nearly one-third of the firm's lawyers went through the program. "Though there's no contractual obligation to stay, we've lost very few people," Greenfield says.

The firm takes pride in its culture, which emphasizes a work/family balance. Lawyers are required to bill a relatively modest 1,800 hours a year, and they're encouraged to spend time with their families, says Gates.

George L. Greenfield and David Wolf, an inventor with a dozen patents, are each 75 this year and both practice full-time. Representing the third generation of Wolfs, Douglas R. Wolf, David's son, co-chairs the firm's Trademark Practice Group.

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