“Surviving Patent Reexamination: Practical Strategies for In-House Counsel”

A patent reexamination can reshape the course of an intellectual property dispute, making a thoughtful strategy essential for protecting valuable innovations. In an article for Today’s General Counsel, Marshall Gerstein attorneys Daniel Henry and Gabrielle Sue outline practical steps in-house counsel can take to navigate patent reexamination proceedings while minimizing risk and preserving long-term business objectives.

The authors explain how companies can effectively respond to reexamination requests by developing a comprehensive strategy that accounts for prior art, parallel litigation, and broader IP goals. They also highlight the importance of early coordination among legal teams to ensure that decisions made during reexamination support, rather than undermine, a company’s overall litigation and business strategy.

As the authors write, “Reexamination is not the end of the road for a patent. It is a critical inflection point that can reaffirm or refine your intellectual property rights. For in-house counsel, the path forward requires not only a timely response but also a clear understanding of prior art, coordination across proceedings, and alignment with broader business and litigation objectives.”

Read Daniel and Gabrielle’s article in Today’s General Counsel.