Thank you for considering Stake to assist with your patent litigation needs. Stake is an intellectual property boutique serving clients across the United States in both domestic and international matters. If you’re ready to chat about our patent litigation services and find out whether Stake would be a good fit for your business, please complete our contact form!
At present, Stake primarily offers Patent Litigation services, but we may evaluate and consider Trademark, Copyright, and Trade Secret litigation matters as well.
Enforcement of intellectual property is one of the most-overlooked forms of monetizing intellectual property by startups and small businesses. This may primarily be due to the expense often involved (though Stake does offer contingency litigation options on a case-by-case basis). Enforcement can be accomplished through litigation, whether in court or in the Patent Trial and Appeal Board (PTAB), though most cases can be resolved in pre-litigation following a cease-and-desist letter, a demand letter, or negotiations.
What exactly is Patent Litigation?
Patent litigation is the process of enforcement of a patent, defense against enforcement of a patent, invalidation of a patent, or defense against invalidation of a patent. This can take various forms, and can occur in federal courts or at the Patent Office, or even be negotiated and settled before reaching either.
What are the Stages of Patent Litigation
Patent litigation can be a very long process if seen through all of the way to a final disposition after trial. For the purposes of strategizing, its often divided into some high-level stages used to define milestones in the overall litigation process.
Opinion of Counsel
The first stage of considering in earnest whether to enforce or invalidate a patent in earnest is obtaining an opinion of counsel relative to what you are seeking to accomplish through litigation. This stage can be expected to cost anywhere from $10k for a relatively straightforward freedom-to-operate opinion to upwards of $100k for a highly-involved invalidity/non-infringement combination opinion. This, of course, depends on the type of opinion needed, the patent(s) in question, and the ultimate litigation strategy so it’s best to look to the estimate received for your particular case. It’s also important to remember that these opinions are far more involved than a patentability opinion, and are designed to provide the information necessary to make decisions as to subsequent litigation strategy.
- Freedom-to-Operate Search (a.k.a., FTO Search or Clearance Search)
- Freedom-to-Operate Opinion (a.k.a., FTO Opinion or Clearance Opinion)
- Invalidity Search
- Invalidity Opinion
- Validity Opinion
- Infringement Opinion
- Non-Infringement Opinion
After you’ve completed an infringement analysis and found that your competitor’s service or product does arguably infringe on your patent, you may want to jump straight to filing a complaint in Federal Court. While this is the right strategy in some cases, in many more, after formulating a strategy the next step is preparing a cease-and-desist letter and sending it directly to the alleged infringer. These letters can get quite complicated and vary greatly depending on what your enforcement strategy is, but the essence is to alert the alleged infringer to their allegedly infringing activity.
Sometimes a cease-and-desist letter may be sent earlier than completion of a formal infringement opinion due to timing concerns (but usually in no case before you’ve completed relevant parts of the analysis itself). This notice is important—critically so if you haven’t marked your patented product—to alert the alleged infringer to a variety of things, including among other things that the potential damages meter is running, and that they need to implement a litigation hold on potentially discoverable documents. Often, too, a cease-and-desist letter will include an invitation to negotiate a license (whereby you would receive a royalty) or some other transaction—but this, too, is a strategy decision.
Federal Court Patent Litigation
Strategies vary significantly at this point, but the next step of enforcing a patent is filing a complaint in federal district court. From a very high level, this include conducting discovery, formulating claim constructions, and, in exceedingly rare cases, conducting a trial. Two types of proceedings are generally relevant here:
- Infringement—used to enforce a patent in federal court; and
- Declaratory Judgement of Invalidity—used to invalidate a patent in federal court.
Patent Trial and Appeal Board (PTAB) Litigation
As an alternative to litigating a patent in federal district court, the U.S. Patent & Trademark Office offers a forum—the Patent Trial and Appeal Board (PTAB)—for trying a patent for validity. These proceedings are often faster and more cost-effective than litigating the validity of a patent in federal district court.
- Inter Partes Review (IPR) Litigation—used to invalidate a patent in the Patent Office generally after the first 9 months of a patent’s term.
- Post Grant Review Litigation—used to invalidate a patent in the Patent Office within the first 9 months of a patent’s term.
How much does it cost to enforce, invalidate, or defend a Patent?
Patent litigation is a group of services for which it is difficult to pin down an exact cost due to its highly-variable nature, and as such, typically has to be billed hourly, even by Stake. After a full case evaluation, we will be able to work with you to assemble a budget for litigating a patent as part of your litigation strategy.
Contingency Patent Litigation
On a case-by-case basis, and wholly at Stake’s discretion, Stake will consider accepting a patent litigation case on contingency. Due to the amount of work involved, Stake will evaluate a case requested on contingency to determine whether a contingency representation would be feasible. Typically, percentages of recovery accepted for cases on contingency across patent litigation firms range from 30-40% of the total negotiated, settled, or awarded recovery. In these cases, the client would remain responsible for all costs such as court fees.
How can Stake help Enforce your Patent?
Stake can help you through the entire lifecycle of a patent—from invention through enforcement of the patent against an infringer (or defense against an accusation of infringement). If you’re ready to chat about our litigation services and find out whether Stake would be a good fit for your business, please complete our contact form today!