“Patent Filers Should Anticipate Disputes at the Earliest Stages”

Companies can strengthen their patent portfolios by anticipating potential disputes long before litigation is on the horizon. In an article for Bloomberg Law, Marshall Gerstein partner Ryan Schermerhorn explains why companies should view patent prosecution, portfolio monitoring, and enforcement as interconnected parts of a single strategy, rather than separate stages of the patent lifecycle.

“The most consequential decisions in a patent’s lifecycle are often made at the earliest stage, sometimes without considering how the patent might ultimately need to perform in a dispute,” Ryan writes.

In his column, Ryan discusses how early decisions involving claim scope, dependent claims, and patent specifications can affect a company’s options years later, particularly if a patent faces a post-grant challenge. He also explains how competitor monitoring, freedom-to-operate analyses, and post-grant proceedings can work together to help companies identify and address risks proactively.

For companies with international patent portfolios, Ryan notes that strategy should also account for differing requirements and procedures in Europe, including European Patent Office opposition proceedings and the Unified Patent Court.

Ultimately, Ryan argues that an effective patent strategy depends less on the size of a company’s legal team than on cross-functional coordination.

“What matters isn’t the size of the team, but whether someone is accountable for the connections between filing, monitoring, and enforcement so that each informs the others,” he writes.

Read the full article in Bloomberg Law.