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For more than four decades, Fenwick & West LLP has helped some of the world’s most recognized companies become, and remain, market leaders. From emerging enterprises to large public corporations, our clients are leaders in the technology, life sciences and cleantech sectors and are fundamentally changing the world through rapid innovation.  MORE >

Fenwick & West was founded in 1972 in the heart of Silicon Valley—before “Silicon Valley” existed—by four visionary lawyers who left a top-tier New York law firm to pursue their shared belief that technology would revolutionize the business world and to pioneer the legal work for those technological innovations. In order to be most effective, they decided they needed to move to a location close to primary research and technology development. These four attorneys opened their first office in downtown Palo Alto, and Fenwick became one of the first technology law firms in the world.  MORE >

From our founding in 1972, Fenwick has been committed to promoting diversity and inclusion both within our firm and throughout the legal profession. For almost four decades, the firm has actively promoted an open and inclusive work environment and committed significant resources towards improving our diversity efforts at every level.  MORE >

At Fenwick, we are proud of our commitment to the community and to our culture of making a difference in the lives of individuals and organizations in the communities where we live and work. We recognize that providing legal services is not only an essential part of our professional responsibility, but also an excellent opportunity for our attorneys to gain valuable practical experience, learn new areas of the law and contribute to the community.  MORE >

Year after year, Fenwick & West is honored for excellence in the legal profession. Many of our attorneys are recognized as leaders in their respective fields, and our Corporate, Tax, Litigation and Intellectual Property Practice Groups consistently receive top national and international rankings, including:

  • Named Technology Group of the Year by Law360
  • Ranked #1 in the Americas for number of technology deals in 2015 by Mergermarket
  • Nearly 20 percent of Fenwick partners are ranked by Chambers
  • Consistently ranked among the top 10 law firms in the U.S. for diversity
  • Recognized as having top mentoring and pro bono programs by Euromoney

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We take sustainability very seriously at Fenwick. Like many of our clients, we are adopting policies that reduce consumption and waste, and improve efficiency. By using technologies developed by a number of our cleantech clients, we are at the forefront of implementing sustainable policies and practices that minimize environmental impact. In fact, Fenwick has earned recognition in several areas as one of the top US law firms for implementing sustainable business practices.  MORE >

At Fenwick, we have a passion for excellence and innovation that mirrors our client base. Our firm is making revolutionary changes to the practice of law through substantial investments in proprietary technology tools and processes—allowing us to deliver best-in-class legal services more effectively.   MORE >

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Good, Bad & Uncertainty of New Patent Guidelines

December 16, 2014

​Fenwick & West patent partner Robert Sachs was quoted extensively in a Scrip Intelligence article discussing new guidance for judging patent claim eligibility released by the U.S. Patent and Trade Office on December 15, 2014.

Sachs characterized as "very interesting" the PTO's 2014 Interim Guidance on Patent Subject Matter Eligibility, which revises previous PTO guidance in the wake of U.S. Supreme Court rulings in Myriad and Mayo.

Sachs praised the guidance for noting that the Supreme Court had not laid out a per se rule excluding software or business methods from patent protection eligibility and for not imposing special requirements. He had a more mixed opinion of the PTO's stance that patent rule excluding software or business methods from patent protection eligibility and for not imposing special requirements. He had a more mixed opinion of the PTO's stance that patent examiners must consider claims as a whole, however.

"This is helpful to the extent that you can point to the specification and get the examiner to appreciate that the inventor is not seeking to patent an abstract idea, but a specific system or process," Sachs told Scrip.

At the same time, Sachs found several aspects of the PTO memorandum to be problematic.

For one thing, he said, there is "considerable uncertainty" about the way in which the guidance will be followed, "because the USPTO fails to acknowledge that the [Myriad and Mayo] court decisions are inconsistent."

Sachs was also critical of the PTO's effort to apply the Mayo test to other federal court rulings on patent claim eligibility.

"While creative, this is not helpful, since it often bears no relation to how the courts in fact decided those cases," he said.

In addition, some of the PTO's case summaries of other patent eligibility case law are "plain wrong," Sachs continued, adding that "there are lots of snippets of language" in the summaries "that can be used by examiners very expansively, since they are taken out of context."

Sachs also expressed disappointment with the PTO for ignoring the significance of preemption, "even though this is the key motivation for the 101 exceptions, as expressly stated by the Supreme Court."

One other problem with the guidance, Sachs indicated, is that it doesn't set conditions for deciding whether a claim limitation is routine or whether something is an abstract idea.

"Examiners can continue to simply make an unsupported assertion, and put the burden on the applicant to demonstrate why the assertion is incorrect," he said.

The full article is available through the Scrip website (subscription required).