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Practice Group Leader:
Fenwick & West has more than 40 registered 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 and counseling, strategic patent counseling, and patent litigation.
Patent Prosecution and Counseling
- Over 40 registered patent professionals, many with advanced technical degrees and actual business experience in disciplines such as electrical engineering, chemistry and computer science
- File 1,000 – 1,500 applications every year and secure more than 250 patents every year
- Patent attorneys work directly with our clients’ engineers and programmers to implement ongoing patent filing programs
- Develop invention and innovation program to provide incentives for engineers to identify patentable technology
- Organize and participate in invention committee to strategically evaluate technology and to proactively identify areas in which to focus patent protection
- Provide strategic patent portfolio development and cost-effective prosecution of patent applications
- 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
- Strategic "top down" approach
- Driven by clients' business goals
- Protects technology that provides competitive advantages, not merely clever ideas
- Includes 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
- Considers 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'
- Includes 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
Related services include Intellectual Property, Patent Litigation, and Mergers and Acquisitions.
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