Costs Involved in Invalidating a US Patent

Introduction

Invalidating a US patent can be a complex and costly process. While hiring a patent agency may offer lower rates compared to traditional law firms, especially for prosecution-related services, the overall costs can still be substantial. This article outlines the various costs involved, including those from patent office proceedings, patent litigation, attorney fees, USPTO fees, and expert witness fees.

Costs for Patent Office Proceedings

The United States Patent and Trademark Office (USPTO) offers several administrative proceedings to challenge the validity of a patent. These methods include ex parte reexamination, inter partes review, and post-grant review, and their costs can vary widely. - Ex Parte Reexamination: As per the AIPLA 2019 Report, the median cost for an ex parte reexamination in 2019 was $15,000. This process is relatively straightforward and can be cost-effective for simple cases. - Inter Partes Review (IPR): The reported median cost for an inter partes review was $350,000. This method is more complex and can be more expensive, especially for larger and more intricate patents.

Costs for Patent Litigation

If a patent dispute escalates to court, the financial burden can become significantly higher. According to the AIPLA 2019 Economic Survey, the median cost of a patent infringement lawsuit where the stakes range from $1 million to $25 million is around $1.5 million by the end of discovery and $2.5 million through final disposition.

Attorney Fees

Legal fees are a critical component of invalidating a patent. According to a survey by IPWatchdog, the hourly rate for a patent attorney can range from $200 to $800, heavily dependent on their experience and geographic location.

USPTO Fees

The USPTO imposes fees for filing requests for reexamination or petitions for inter partes review and post-grant review. As of June 2024, the filing fee for an ex parte reexamination is $6,300 for large entities and $2,520 for small entities. For an inter partes review, the petition fee is $19,000 for all entities, plus an additional $22,500 post-institution. These fees can sometimes surpass the rates charged by a patent agency for associated legal services.

Expert Witness Fees

In many patent disputes, it is necessary to engage an expert witness to provide technical testimony. According to a IMS ExpertServices survey, expert witness fees can range from $200 to $600 per hour, depending on the complexity and specialization of the witness.

Conclusion

The cost to invalidate a US patent can range from a few thousand dollars for a simple ex parte reexamination to several million dollars for a complex patent lawsuit. It is crucial to consult with a patent attorney to understand the potential costs involved in your specific situation.

Keywords: patent invalidation, patent litigation, ex parte reexamination