close

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

MORE >

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 Your Newly Filed Patent Application Utility

This paper explains important information about your patent application, including your obligations as an applicant. Please read it carefully.

Examination of the Patent Application

Within approximately two to four years (or just a few months, if you have requested a form of expedited examination), we will receive a substantive review of the patent application from an examiner at the United States Patent and Trademark Office (USPTO). The examiner will consider the content of the application, including the written description, drawings, and the claims, and will determine whether the requirements for patentability are satisfied. In particular, the examiner will perform a search of the prior art for the claimed invention and will determine whether the claims are sufficiently different from the prior art to merit a patent. We will keep you informed of any developments with this patent application as they arise. Please contact us if you would like us to check the status of the patent application with the USPTO.

Marking Your Products as “Patent Pending”

You can label products covered by the patent application as “patent pending” or “patent applied for” to give notice to others that you have applied for a patent. However, the right to enforce a patent does not begin until the actual grant of the patent.

Duty of Disclosure

USPTO rules require that everyone involved with the prosecution of a patent application disclose to the USPTO any information that may be material to the application’s patentability. Failure to comply with this duty seriously jeopardizes the patent owner’s ability to enforce any subsequently issued patent.

In particular, the duty to disclose applies to (i) each inventor; (ii) each attorney or agent who prepares or prosecutes the application; (iii) every other person who is substantively involved in the preparation or prosecution of the application; and (iv) individuals other than the attorney, agent or inventor, who have disclosed information to the attorney, agent or inventor.

Information that must be submitted under this duty includes: (i) publications or other information that describes anything similar or identical to that claimed in the patent application, or that discloses a significant concept or feature of the invention, (ii) any information related to public use, public disclosure, sale or offer for sale of the invention or any similar device that occurred more than one year before the filing date of the application and (iii) any information related to knowledge or use of the invention by the public.

The duty does not obligate you to search for material information. Only information of which you are aware needs to be submitted. However, please thoughtfully consider any publications you have access to, and any public uses, public disclosures, sales, and offers for sale made by the company, you, or others associated with you. Further, we are required to file only information that is: (i) material to patentability of this patent application, and (ii) not cumulative to information already submitted. If you have any doubts as to whether an item of information must be disclosed to the USPTO, please forward it to us for our review.

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.

The duty of disclosure is an ongoing duty throughout the pendency of the patent application. Accordingly, if you are currently aware of any material information, please send it to us for our review and submission. You should also promptly forward any material information to us for timely submission to the USPTO if you become aware of if any time before the patent issues.

Small and Micro Entity Status

Our reporting letters and/or correspondence from the USPTO may indicate that your patent application was filed asserting a right to either small or micro entity status. These statuses entitle you to a discount on many of the USPTO fees. However, improperly claiming small or micro entity status may cause the patent to be unenforceable. Therefore, please contact us immediately if you were incorrectly identified as a small or micro entity.

The following entities generally qualify as a small entity:

  • an individual,
  • a company having not more than 500 employees, and
  • non-profit organizations and universities.

However, these entities do not qualify as a small entity if the invention has been assigned, granted, conveyed, or licensed to a large entity (i.e., an entity that does not qualify as a small entity), or is under obligation under contract or law to assign, grant, convey, or license, any rights in the invention to a large entity.

Please note that your ability to claim small entity status must be reviewed and reassessed upon (1) filing a new application, (2) paying the issue fee for a patent, and (3) paying each of the three patent maintenance fees. Therefore, please contact us immediately if there are any changes to your small entity status so that we can update your status with the USPTO

​​​​​