As anyone who has ever been involved in a patent litigation understands, the costs can be considerably high. The average cost for litigating a patent case to judgment is estimated at approximately $2.7 million. (Report on the Economic Survey, AIPLA, 2011.) Typically, district courts have been the preferred jurisdiction for challenging patents. That may change with implementation of certain provisions in the America Invents Act, on Sept. 16, which establishes administrative procedures for blocking patent applications or invalidating patent claims at the United States Patent and Trademark Office (PTO).
The majority of the provisions that go into effect on Sept. 16 provide new avenues for competitors or an accused infringer to challenge patents and pending patent applications. While it remains to be seen whether any of these procedures will reduce or replace litigation and thereby streamline costs, at a minimum, strategic use of these procedures can narrow the scope of claims and introduce material on patentability as a prelude to litigation, or to leverage a favorable settlement. These strategies, however, must be weighed against the highly regulated and sometimes narrow timeframe for making the challenges and the possible estoppel effect that applies to any subsequent proceeding.
