IP strategy and how to best prepare for upcoming litigation
July 2026 | SPECIAL REPORT: HEALTHCARE & LIFE SCIENCES SECTOR
Financier Worldwide Magazine
July 2026 Issue
For many companies, the assets that matter most are no longer physical; they are the technology, software, data and know-how that distinguish a business from its competitors. Intellectual property (IP) rights are a core part of corporate value creation. They protect these intangible assets from unauthorised use and allow businesses to trade, license and sell them much like tangible property.
An IP right, however, is only as valuable as the protection it affords. When a dispute arises, that protection is tested in practical terms. For that reason, preparing for IP litigation should begin well before a suit is filed. Companies that treat litigation readiness as part of their broader IP strategy are better positioned to act decisively, negotiate from strength, and avoid preventable weaknesses when their rights are challenged or need to be enforced. We focus here on US patent litigation to illustrate how companies can pair a sound IP strategy with practical litigation readiness to maximise the value of their IP portfolios and enforce their rights effectively.
Litigation readiness begins before a patent is filed
In the US, a patent’s life cycle often begins with the filing of a provisional patent application with the US Patent and Trademark Office. That filing can establish the invention’s priority date, which becomes a critical reference point for determining whether the invention was new and nonobvious when compared against earlier technology – two bedrock requirements for patentability. Because courts and litigants will assess a patent’s validity against the state of the art as of that priority date, the timing of a provisional application can significantly shape the course of future litigation.
As technological development is cumulative, businesses often benefit from filing a provisional application early. An early priority date can reduce the risk that later developments in the field will be used in the courtroom to challenge an asserted patent as lacking novelty or being obvious. But filing early also carries risk, as the applicant generally must file a nonprovisional application within 12 months, and the provisional must adequately support the claims the company later seeks to pursue.
Companies should also keep in mind that other forms of IP, such as trade secret protection, may help protect valuable technology before a patent application is filed. Deciding when to file a provisional application therefore requires a practical assessment of the competitive landscape. When a company is developing pioneering technology in a relatively slow-moving area, trade secret protection may provide useful interim protection while the patent application is prepared. By contrast, in a fast-moving field where several competitors may be pursuing the same advance, filing a provisional application early may be critical in securing a priority date and protecting the company’s intangible assets. Companies should therefore critically assess timing of provisional applications, balancing consideration of whether the invention is sufficiently developed and described with enough data, working examples or practical guidance, and not waiting so long that others in the field file first.
In the US, once a non-provisional patent application is filed, a Patent Office examiner will consider the application for compliance with the requirements of patent law. This process should not be treated as separate from future litigation. The Patent Office examiner often rejects the application at least once, requiring the applicant to amend the patent’s claims, distinguish the invention from technologies that were known, or otherwise explain why the patent should be granted. Companies should recognise that those amendments and statements become part of the public record. Years later, in litigation, an accused infringer may rely on that record to argue that the patent is narrower than the company contends. For example, if an applicant tells the examiner that particular features distinguish the invention from earlier technology, a future defendant may argue that the company cannot later read the patent broadly enough to cover products lacking those features. Companies should therefore work with their prosecution counsel to ensure that statements on the record are aligned with the long-term value of the portfolio. The goal is not simply to obtain a patent, but to obtain rights that can withstand scrutiny and be enforced in a way that supports the company’s commercial objectives.
Mobilising IP assets in litigation
Once a company has built an IP portfolio, it must decide how to use it. Patent litigation is one of the most powerful tools available to protect a company’s market position, but it is also expensive, disruptive and highly fact intensive. Before filing suit, companies should therefore identify what business objective they are trying to achieve: stopping a competitor from entering the market, obtaining a licence, strengthening a negotiating position, protecting a core product or responding to an infringement threat. The answer will shape nearly every strategic decision that follows, and companies should communicate these goals to litigation counsel at the outset so that the litigation strategy is aligned with the company’s broader commercial objectives. Litigation counsel can, in turn, tailor litigation strategy to meet those objectives and offer realistic viewpoints based on the current legal landscape, as patent law continues to evolve with new advances in technology.
Companies should also work with litigation counsel early to develop a clear invention story prior to initiating litigation. In a typical patent infringement suit, an accused infringer will often respond with two defences – that their accused product does not infringe the asserted patent, and even if it does, the patent fails to comply with the requirements of patent law and is therefore invalid. Those issues can be highly technical, but they are often presented to judges and juries without specialised experience in the relevant technology. A compelling and cohesive invention narrative is therefore essential to translating the value of a patent portfolio from the laboratory to the courtroom.
To build that narrative, companies should be prepared to identify and produce documents showing how the invention was developed, such as laboratory notebooks, technical reports, testing records, internal presentations and communications regarding the problem the invention was designed to solve. Litigation counsel can help identify key witnesses, such as inventors and other key technical employees who may be able to explain the invention, the state of the field and how the invention contributed to the state of the art. Those documents and witnesses become critical not only to proving infringement, but also to defending the patent’s validity and credibility when challenged.
Ownership is another issue that should be resolved before litigation begins. A company cannot enforce IP rights unless it owns them or otherwise has the right to sue. In modern corporate structures, those rights may be governed by complex assignments, licences, acquisition agreements or intercompany agreements, and different subsidiaries and affiliates may hold different rights in the same IP. Companies should therefore keep the relevant agreements ready for production and work with litigation counsel to determine which entities have standing to sue and whether parent companies, subsidiaries, exclusive licensees or other rightsholders need to be involved.
Once litigation begins, it may move at a sprint or unfold over years. Patent cases in different US trial courts proceed under different local practices, case schedules and approaches to patent-specific issues. Some cases may move relatively slowly, while others, such as disputes involving biosimilars or generic drug approval, may proceed on specialised timelines because of the threat of at-risk launches and other regulatory considerations. A company’s business objectives should therefore inform not just whether to file suit, but also where and when to file. By identifying those objectives early, companies can work with litigation counsel to select a venue and litigation strategy suited to the outcome they hope to achieve.
Finally, litigation can change quickly, reinforcing the need for close and efficient communication with counsel throughout the case. Courts may require the production of large volumes of documents on short timelines, opposing parties may shift their strategy as the factual record develops, and new appellate precedent may alter the legal landscape while the case is ongoing. Maintaining clear lines of communication with litigation counsel helps ensure that the company can respond quickly to these developments and adapt its strategy as needed to protect the value of its IP portfolio.
The value of a company’s IP portfolio depends on whether the company is prepared to use those rights when it matters. IP rights create value when they are deployed effectively and with a clear view toward concrete business objectives. For patent owners, that requires preparation at every stage with future litigation in mind. Businesses that do this work early and proactively are better equipped to move quickly when disputes arise and to convert their IP portfolios into practical commercial advantage.
Jeanna Wacker and Ashley Ross are partners and Ani Bakre is an associate at Kirkland & Ellis LLP. Ms Wacker can be contacted on +1 (212) 446 4773 or by email: jeanna.wacker@kirkland.com. Ms Ross can be contacted on +1 (212) 446 4954 or by email: ashley.ross@kirkland.com. Mr Bakre can be contacted on +1 (646) 444 9163 or by email: ani.bakre@kirkland.com.
© Financier Worldwide
BY
Jeanna Wacker, Ashley Ross and Ani Bakre
Kirkland & Ellis LLP