close

About Our Patent Practice

Fenwick & West has more than 60 patent professionals, many with advanced technical degrees and actual business experience in disciplines such as chemistry, molecular biology, electrical engineering and computer science. From software to semiconductors, and biotechnology to business methods, Fenwick's patent professionals have served innovative companies and research entities across the globe for over three decades. Our patent practice involves patent prosecution, strategic patent counseling, open source counseling, post-grant proceedings and patent litigation.

Patent Prosecution and Counseling

  • File 1,000 – 1,500 applications every year
  • Work directly with our clients’ engineers and programmers to implement ongoing patent filing programs
  • Develop invention and innovation programs to provide incentives for engineers to identify patentable technology
  • Organize and participate in invention committees ​to strategically evaluate technology and to proactively identify areas in which to focus patent protection
  • Handle portfolio management—for U.S. patents and international patents—for leading technology companies in the United States and abroad
  • Strong IP audit practice that regularly performs:
  • Strategic analysis of patent portfolios
  • Pre-acquisition and pre-investment due diligence
  • Analysis of competitors' patent portfolios for license negotiations or avoidance of infringement
  • Preparation of clearance opinions where appropriate
  • Unparalleled deal support due to superior knowledge of technologies, which permits a direct interface with engineers and technical experts

Our Approaches to Patent Strategy

  • Enhance efficiency and reduce costs through our innovative patent operations model, including providing routine patent services from our back office in Vermont and an entirely paperless system

  • Include collaboration with management on design and implementation
    • Address business development, marketing, engineering and production interests in an integrated manner
    • Ensure mechanisms are in place for executive-level endorsement and inspiration to ensure successful implementation
    • Constant attention to cost-benefit balance of IP activity with goal that IP is seen as a profit center
    • Example: Developed internal procedure for immediate and regularized processing of patent demand letters, which reduced internal cost and stress, and shifted command of the situation in the company's favor
  • Consider potential uses of patents
    • Defensive patents
    • Offensive patents
    • Technology development/exchange
    • Licensing
    • Considers what your competitors are doing
    • Strategies are two-sided: clients' and their competitors'
  • Include patent portfolio analysis and IP audits, which are often a part of the IP due diligence we perform in connection with our mergers and acquisitions practice
​​​​​​​