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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 >

Mountain View Office
Silicon Valley Center
801 California Street
Mountain View, CA 94041
650.988.8500

San Francisco Office
555 California Street
13th Floor
San Francisco, CA 94104
415.875.2300

Seattle Office
1191 Second Avenue
10th Floor
Seattle, WA 98101
206.389.4510

New York Office
1211 Avenue of the Americas
32nd Floor
New York, NY 10036
212.921.2001

Shanghai Office
Unit 908, 9/F, Kerry Parkside Office
No. 1155 Fang Dian Road
Pudong New Area, Shanghai 201204
P.R. China
+86 21 8017 1200


Information Regarding Duty to Disclose

This memorandum explains the duty to disclose associated with your U.S. patent application under United States Patent and Trademark Office (USPTO) rules.

Who has a duty to disclose?

Everyone associated with filing or prosecuting the application owes a duty of candor and good faith to the USPTO. That obligation includes disclosing material information related to patentability of the pending claims. Examples of people subject to this duty include:

  • each inventor;

  • each attorney or agent who prepares or prosecutes the application;

  • every other person who is substantively involved in the preparation or prosecution of the application; and

  • individuals other than the attorney, agent, or inventor, who have disclosed information to the attorney, agent or inventor.

How do I satisfy the duty?

Your duty is satisfied by providing us with the relevant information. We will in turn review the information and submit it to the USPTO if necessary, via a document known as an Information Disclosure Statement (IDS).

What information should be disclosed to the USPTO?

You should disclose any publication of which you are aware that describes a composition, device or method similar to that claimed in the patent application, or that discloses a significant concept or feature of the invention. Publications include, for example, printed documents such as patents, articles, promotional literature, user manuals, and conference proceedings (meeting abstracts, posters, and presentations); and electronic files or product descriptions publicly available anywhere on the Internet, the World Wide Web, or any other computer service or network, including publicly accessible company websites.

Are publications and patents the only items that must be disclosed?

No. You should disclose any public use, public disclosure, sale, or offer for sale of the invention or any similar device that occurred anywhere in the world prior to the filing date of the application. A public use or disclosure is one made to others who are not under an obligation of confidentiality. Offers for sale may include promotional displays, marketing tests, price lists, beta tests, or other acts indicating an intent to commercialize the invention, whether made in public or under a non-disclosure agreement. You should also disclose any knowledge or use of the invention by others, of which you are aware, before your filing date.

Do you need copies of the relevant documents from me?

At a minimum, we need citations to the relevant documents that you have identified. Depending on the nature of the document cited, we may need to obtain a copy of the document from you or from a third-party source. If you do provide a copy of a relevant document, you should make sure that the copy of the material that you send us is legitimate and that you have complied with all third party rights, including copyrights, in obtaining the material. By forwarding any material to us, you are confirming that you have all necessary rights to do so, and we will rely on your representation in connection with our use and potential disclosure of the material to the USPTO. If you are not sure about whether you have the necessary rights, please let us know and we will work with you to obtain the document with all required rights.

Do I have to disclose my own publications or patents?

Yes. You should submit all publications, patents, and other information, even if you are the author or inventor.

Do I have to do a search for prior art?

No. You have to disclose only that material information of which you are actually aware. You do not have to search actively for such information. However, we suggest that you thoughtfully consider any publications you have access to, and any public uses, public disclosures, sales, and offers for sale that may have been made by the company, by you, or by others associated with you.

What happens if I fail to disclose information of which I am aware?

Failure to make a full disclosure, as described above, may seriously jeopardize the patent owner’s ability to enforce any patent that might issue. Willful failure to provide material information may cause any subsequently issued patent to be unenforceable and may result in an action for damages against the patent owner. Where any doubt exists, we encourage you to bring the relevant information to our attention so that we can determine whether it should be disclosed to the USPTO.

How long does the duty of disclosure last?

The duty of disclosure is an ongoing duty that lasts throughout the pendency of the patent application. Accordingly, if you become aware of any material information at any time before the patent issues, you should promptly forward it to us for timely submission to the USPTO.​​