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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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Deciding Which Inventions to Patent

In the early stages of development, inventors and their employers are often confused about what to patent. When faced with a dizzying array of new products and feature enhancements, it may be tempting to select the flashiest one, or fall back on a patent strategy from a prior product, a different company, or an earlier time. Be wary: These are poor proxies for determining what is valuable. In fact, what is valuable may be easily overlooked and may morph over time as the competitive environment and customer needs change. What is valuable to you depends on your goals for your patent strategy.

Companies typically have several patent strategy goals that drive decisions related to implementation of their strategy. The selection of one or more of these as primary goals may influence how to weigh the indicators of patent value discussed below.

Goal 1: Achieve marketplace prestige. Patent applications can signal to market stakeholders that a company has developed proprietary technology. Those who focus on Goal 1 use patents primarily to showcase a company’s contributions to the state of the art and reassure investors that the company is taking appropriate steps to protect their investments in research and development.

Goal 2: Stop imitators/copycats. Imitators are those who seek to swoop in and steal your customers by copying your technology rather than developing their own. This shortcut saves the imitator development time and effort, increasing their profitability at your expense. Imitators may particularly prey on industries where products can be easily reverse-engineered and/or have low barriers to entry. Contrary to conventional wisdom, those who focus on Goal 2 find imitators a source of annoyance rather than a source of flattery.

Goal 3: Build an arsenal for use against business competitors.
 A stockpile of patents can have a significant deterrent effect on a competitor looking to pick a fight. Even if a patent war breaks out among competitors, those who focus on Goal 3 can use a common fear of mutually assured destruction to broker a cease-fire in the form of a patent cross-license. Those who focus on Goal 3 will patent features that are not even in their own products if it is likely that a competitor will want to add those features in the competitor’s products.

Goal 4: Monetize for revenue. The rights granted by a patent to exclude others from making, using, selling and importing an invention does not necessarily mean that the patentee wants to be the only party engaging in these activities. Those who focus on Goal 4 look forward to sharing their patented technology with others, for the right price. Although monetization is an often discussed goal, few operating companies make this goal a high enough priority to be meaningful.

After selecting one or more goals from the list above, companies should then turn to indicators used to value inventions and their corresponding patents. The following criteria can be used to assess the value of the likely outcome of the patenting process at the outset. Thus, these indicators of patent value can be used to select which inventions to pursue in patent applications.

Detectability. This indicator is critical for offensive use of patents to enforce your rights (e.g., Goals 2, 3 and 4), but much less important for achieving prestige (Goal 1). Would you be able to tell if a competitor was practicing the patented invention? What would be observable? Typically, detectability of external-facing features (those shown to customers/users) is higher than the detectability of internal mechanisms or algorithms. A higher level of detectability leads to a higher value of the patent. Note that if the invention is hard to detect, it may be better protected as a trade secret, and exposing the invention in a published patent application may well ruin trade secrecy protection.

Availability of suitable alternatives. This indicator is crucial for arsenal building (Goal 3) and monetization (Goal 4), but relatively less important in achieving prestige (Goal 1) or stopping strict imitators (Goal 2). If you lock up one way (or one category of ways) to solve a problem by patenting it, how good is the next best alternative that remains available to competitors? This concept is also referred to as the availability of “design-around options.” The absence of reasonable alternatives strongly increases the value of the patent.

Likelihood of use by others. This indicator is important for stopping imitators (Goal 2), building an arsenal (Goal 3), and monetizing for revenue (Goal 4), but may not be important for achieving prestige (Goal 1). Is the invention something that others would reasonably like to do? If the invention solves a business problem that others are likely to face, the answer is probably yes. If the invention is narrowly applicable to a specific set of circumstances that is likely to arise only in your product, the answer is probably no. A higher likelihood of use by others leads to a higher value of the patent. This indicator can be used to weed out inventions that are too narrow in scope to be worth pursuing in patent applications.

Scope of claims likely to be allowable. This indicator is more important to building an arsenal (Goal 3) and monetizing (Goal 4) as compared to achieving prestige (Goal 1) or stopping imitators (Goal 2). Assessment of this indicator requires background knowledge of how crowded the field of technology is and how actively others are pursuing related technology. In relatively new technology areas, broader claims are more likely to be allowable than in well-developed technology areas where only narrowly tailored claims are likely to be allowable. Sometimes, companies rely on their chief technology officer and other technical specialists to outline the contours of the intellectual property landscape as they have observed it. Other times, companies request IP landscape studies in order to learn where the white space is between the IP holdings of competitors. A greater scope of claims likely to be allowable leads to a higher value of the patent.

Longevity. Patent applications are typically published 18 months after filing, and typically take between two and four years to issue as patents. Under any patent strategy (Goals 1-4), the value of the patent is greater if the useful life of the invention exceeds the time consumed before the patent issues. The most valuable patents according to this indicator are those that are still relevant until the end of the patent’s 20-year term.

Equipped with an understanding of your patent goals, you can use an appropriately-weighted combination of these five indicators of patent value to score your inventions that are patent possibilities. Then, based on the scores, you can rank the patent possibilities. The final decision is how many of the top-ranked patent possibilities you can fit into your IP budget. Whatever the number may be, you will be prepared to implement your strategy with confidence in the true value of what you are pursuing.


Originally published in the Daily Journal 8/27/14.

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