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ARTICLE · 12 JANUARY 2021

Balancing Cost And Enforcement

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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Most patent applications are filed with a view to eventually obtaining protection in multiple jurisdictions. However, differences in patent systems mean that adopting ...

United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Maeve O’Flynn
Maeve O’Flynn
Ningling Wang
Ningling Wang
Amanda Murphy
Amanda Murphy
K. Victoria Barker, Ph.D.
K. Victoria Barker, Ph.D.
Stacy Lewis
Stacy Lewis
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Most patent applications are filed with a view to eventually obtaining protection in multiple jurisdictions. However, differences in patent systems mean that adopting a "one size fits all" approach to drafting and prosecution can result in patents that fail to fully meet the commercial needs of the rightsholders. In this article, we look at steps that can be taken during drafting and prosecution to ensure that the resulting patents are as enforceable and defensible as possible in multiple jurisdictions, but without incurring excessive costs.

Many patent applications are drafted under significant time pressures. It is consequently easy to lose sight of the commercial goals but, of course, the general aim with most patent applications is to end up with valid/patentable, enforceable, and infringed patents to assert against would-be infringers. It is therefore important to consider who this would-be infringer is when drafting to ensure that only the most valuable,

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