Now that patent reform has been signed into law, the U.S. Patent and Trademark Office has released their proposed rules for administrative procedures to challenge issued patents, including post-grant and inter partes reviews. While these proceedings will provide litigation alternatives, they are also costly and could put additional strain on the USPTO.
The fees associated with these proceedings are based on estimates by the American Intellectual Property Law Association, but the amounts may be misleading, as the agency did not define what goes into the preparation, and the complexity of proceedings can depend on what invalidity arguments are at issue, the amount of prior art and other factors, according to Fenwick & West partner Rajiv Patel.
"It would be better to propose a range of costs than a number that could be too low in some instances or too high in other instances," Patel said. However, the fees are still far below the cost of litigation, according to Patel.
"For a cash-constrained company, these proceedings give them options to challenge a patent without taking on the burden of full-blown litigation," he said. "Even if a company has the means to take on litigation, these proceedings allow it to strategically plan when it should opt for litigation and when it should counter with less costly post-grant and inter partes reviews."
While the USPTO fees may seem steep to many companies, the procedures do provide more options when contesting a patent, according to Patel.
"Companies have more tools available to challenge patents that they believe lack validity and more flexibility with respect to matching the appropriate proceeding with their business strategy," he said.
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