“Post-Patent Strategy: Next Steps for Companies without In-House Counsel”

When it comes to patent risk, waiting until a cease-and-desist letter or licensing demand arrives can leave companies with fewer, and often more expensive, options.

In a recent article for Today’s General Counsel, Marshall Gerstein partner Paul Stephens explains why companies without dedicated in-house intellectual property counsel should take a proactive approach to post-patent strategy, particularly during the critical months after a relevant patent issues.

Paul outlines the options available during the first nine months following patent issuance, including post-grant review, and explains how that window can provide companies with opportunities to challenge potentially problematic patents before their options narrow. He also discusses the importance of monitoring competitor patent activity and considering whether new issuances should prompt companies to strengthen their own patent portfolios.

Once the nine-month window closes, Paul explains how the available tools change, including the potential use of inter partes review and ex parte reexamination. For companies facing a developing dispute, he also addresses the importance of litigation preparation, including documenting independent development, preserving evidence of prior use, and evaluating potential licensing exposure.

For companies without in-house IP counsel, Paul recommends treating outside counsel as a strategic resource rather than waiting to engage them when a problem arises. Regular monitoring and periodic strategic reviews can help companies identify important deadlines, evaluate potential risks, and make deliberate decisions before a patent issue becomes a costly dispute.

Read Paul’s full article, “Post-Patent Strategy: Next Steps for Companies Without In-House Counsel,” in Today’s General Counsel.