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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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Don't Just Patent Everything, You Need To Have A Strategy

You can't patent it all. Inventors often want to patent every potentially novel detail of their technologies and patent attorneys are sometimes willing to help them do it. However, this type of unfocused, shotgun approach often does not lead to the strategic patent protection companies need to prevent competitors from copying their commercially important innovations. Startups and emerging growth companies should focus on building a patent monopoly around the most commercially important choke points of their inventions while making efficient use of their patent dollars and the precious time of their key innovators and technical experts.

Inventors often enthusiastically identify many features that are new and interesting about their technologies. Nonetheless, just because something is novel and potentially patentable does not mean that you should expend your technical staff's time and your patent dollars to patent it. Inventors often overlook weighing how patenting an invention will bring value to the company. The inventions patented should be ones that provide an important business advantage by preventing competitors from making, using, selling, or importing those inventions.

In determining what technology to protect, think about your inventions from the standpoint of identifying choke points or problems that were difficult to overcome and will be a challenge for your competitors to design around unless they use your innovative solutions. Those are areas that make good business sense to protect. By protecting the choke points, you can make it very difficult for your competitors to rapidly develop a competing product as good as yours.

The ability to detect whether a competitor is using your patented invention is another key criterion. If a technology you are patenting is a back end process or hidden component, it may be difficult to tell whether your competitor is using the technology. A patent provides limited value if you cannot tell or cannot prove that your competitor is infringing. Focus on patenting inventions for which infringement will be readily detectable.

It is also important to think strategically about who will be the party that will infringe the claims of the patent. If it will only be infringed by a customer or end user, such as the end user for a software application or a doctor using a medical device, patenting it may be of less value since you may not want to sue potential customers. Ideally, your competitors — presumably the companies that are making products like yours — should be the parties directly infringing your patent. Your patent claims should be specifically drafted to encompass manufacturer and seller infringers rather than just end-user infringers.

Once you understand the focus of the patent applications you should be filing (business choke points, readily detectable, directly infringed by competitors), your patent counsel should work with you to map out a patent portfolio strategy designed to block your competitors from making or selling commercially viable substitutes for your current and anticipated products. Portfolio strategy will be somewhat different for startups versus emerging growth companies, and will vary by technology space.

Startups should focus on getting patent coverage of their core technologies. Due to budget limitations, startups often begin by filing simple provisional applications to protect inventions. However, provisional applications only protect what you describe sufficiently to enable a person of ordinary skill in the art to make and use the invention. Thus, a provisional application should be written to be as close to a full or nonprovisional application as possible. Unless investors insist on seeing larger numbers of applications, you are better off filing one detailed, complete application (provisional or nonprovisional) that thoroughly describes your core technology and its novel, practical alternatives, rather than multiple quick but less detailed provisional applications.

Emerging growth companies that already have core patent applications in place should be thinking about expanding to a more mature patent portfolio containing patent applications beyond those covering core technologies. Fill in gaps around those foundational patents by protecting technologies that allow your core inventions to work better and follow-on improvements to core inventions. Consider pursuing patent applications intentionally designed to encompass your competitors' products for defensive use in case these competitors threaten you with legal action. Think strategically about how you want to use your portfolio, including to protect against copycats, as defense against litigious competitors, and to generate revenue by licensing portions of your portfolio. Make sure the composition of your portfolio is designed with these specific goals in mind.

When protecting inventions outside of the U.S., comprehensive global patenting is usually neither cost effective nor necessary. Rather, strongly consider pursuing patent applications just within the U.S. or within a very limited set of foreign countries that represent key foreign markets for your business. Pursuing foreign protection is extremely expensive, and the money you spend there is money you are taking away from applications you could file in the U.S. on other innovations. If you are filing outside the U.S., protect only the most core or foundational technology.

In certain technology areas, such as the pharmaceutical or medical device fields, world-wide patent protection can seem essential, so the equation is more complicated. But even in these cases, it is often worth limiting your foreign filings, keeping in mind that by locking up the U.S. and key foreign markets, you have already put somewhat of a chokehold on competitors. Even though competitors may be able to make and sell a similar product in Israel, for example, they will be prohibited from making, using, selling, or importing into the U.S. Limiting viable markets may be enough to deter competitors from pursuing competing products. In other words, spend the time and money needed to lock down just enough markets to make copying your invention commercially unattractive for competitors, but no more.

For all types of companies, using patents as an effective tool to protect your growing business requires strategically-minded patent counsel on your side. Your patent counsel should be a partner working with you develop and implement a plan, not just someone working for you to draft applications on whatever you ask them to patent. They should help you develop your patent strategy from a business perspective — not what [can] you patent, but what [should] you patent? In this way, your patent counsel will help you develop a patent portfolio focused around high value patents that will allow you to protect your business goals.