About the Author: Mr. Sheerin is a California licensed patent attorney having represented clients accused of patent infringement in Federal District Court as well as through Inter Partes Review (IPR) at the US Patent Office. A few of Mr. Sheerin's recent results may be viewed here:
The cost of an Inter Partes Review (IPR) is significantly less than the full trial cost at the federal court level. This is because the issues addressed during an IPR trial are typically limited to the validity of the patent claims based on prior art (patents or printed publications) not considered by the examiner during prosecution (i.e., validity issues under 35 USC § 102 (anticipation) and 35 USC § 103 (obviousness)).
There are two US Patent Office filing fees which are currently:
$19,000 to file the petition for an IPR (up to 20 claims); and
$22,500 post-institution trial fee if the petition is granted (up to 20 claims).
Both the above petition fee and the post-institution trial fee are due when the IPR petition is filed. The post-institution trial fee is refunded if the IPR is not instituted.
Although the US Patent Office fees are high relative to general patent prosecution, the most significant cost is the legal fees charged by your law firm which can be as high as $300,000 to $700,000 or more, particularly if you hire a fully staffed, high profile litigation firm.
So the question becomes: do you need to hire a high profile, high cost full litigation law firm that has an incredible amount of overhead for what amounts to a relatively straight forward administrative proceeding held by the Patent Trial and Appeal Board (PTAB)? Furthermore, should you hire a high cost trial attorney who litigates an entire gambit of legal issues, or should you hire a lower cost patent attorney with a practice focused primarily on patent prosecution? Someone who deals with prior art validity arguments under 35 USC § 102 and 35 USC § 103 day in and day out?
For example, I have been prosecuting patent applications as a patent attorney for 28 years. I have drafted and prosecuted over 800 complex patent applications covering electrical and computer engineering inventions for large corporations such as Cirrus Logic and Western Digital, with a success rate of over 95%. My prosecution experience includes several successful appeal petitions at the PTAB which is similar to an IPR trial (both proceedings involve administrative rules). My fees for filing and prosecuting an IPR petition are typically less than half of a high profile, high cost full litigation law firm, and I will reduce my fees if you are not satisfied with my work product.
Hiring a law firm to represent your company in an IPR trial is no different than any other business decision. I recommend interviewing multiple law firms with questions focused on whether the patent attorney understands the technology, the invention, and the prior art, as this is the most important competency when dealing with validity issues under 35 USC § 102 and 35 USC § 103. Understanding the administrative rules is far less important as any competent attorney can follow basic rules of procedure. The PTAB will render their decision based on the competency of the technical arguments, and most importantly the strength of the prior art, rather than the cost of the suit and tie your attorney is wearing.
About the Author: Mr. Sheerin is a California licensed patent attorney having represented clients accused of patent infringement in Federal District Court as well as through Inter Partes Review (IPR) at the US Patent Office. A few of Mr. Sheerin's recent results may be viewed here:
The cost of an Inter Partes Review (IPR) is significantly less than the full trial cost at the federal court level. This is because the issues addressed during an IPR trial are typically limited to the validity of the patent claims based on prior art (patents or printed publications) not considered by the examiner during prosecution (i.e., validity issues under 35 USC § 102 (anticipation) and 35 USC § 103 (obviousness)).
There are two US Patent Office filing fees which are currently:
$19,000 to file the petition for an IPR (up to 20 claims); and
$22,500 post-institution trial fee if the petition is granted (up to 20 claims).
Both the above petition fee and the post-institution trial fee are due when the IPR petition is filed. The post-institution trial fee is refunded if the IPR is not instituted.
Although the US Patent Office fees are high relative to general patent prosecution, the most significant cost is the legal fees charged by your law firm which can be as high as $300,000 to $700,000 or more, particularly if you hire a fully staffed, high profile litigation firm.
So the question becomes: do you need to hire a high profile, high cost full litigation law firm that has an incredible amount of overhead for what amounts to a relatively straight forward administrative proceeding held by the Patent Trial and Appeal Board (PTAB)? Furthermore, should you hire a high cost trial attorney who litigates an entire gambit of legal issues, or should you hire a lower cost patent attorney with a practice focused primarily on patent prosecution? Someone who deals with prior art validity arguments under 35 USC § 102 and 35 USC § 103 day in and day out?
For example, I have been prosecuting patent applications as a patent attorney for 28 years. I have drafted and prosecuted over 800 complex patent applications covering electrical and computer engineering inventions for large corporations such as Cirrus Logic and Western Digital, with a success rate of over 95%. My prosecution experience includes several successful appeal petitions at the PTAB which is similar to an IPR trial (both proceedings involve administrative rules). My fees for filing and prosecuting an IPR petition are typically less than half of a high profile, high cost full litigation law firm, and I will reduce my fees if you are not satisfied with my work product.
Hiring a law firm to represent your company in an IPR trial is no different than any other business decision. I recommend interviewing multiple law firms with questions focused on whether the patent attorney understands the technology, the invention, and the prior art, as this is the most important competency when dealing with validity issues under 35 USC § 102 and 35 USC § 103. Understanding the administrative rules is far less important as any competent attorney can follow basic rules of procedure. The PTAB will render their decision based on the competency of the technical arguments, and most importantly the strength of the prior art, rather than the cost of the suit and tie your attorney is wearing.