Cost of Inter Partes Review: Everything You Need to Know
The cost of inter partes review can be several hundred thousand dollars. This review is part of a trial conducted by the Patent Trial and Appeal Board.3 min read
The cost of inter partes review (IPR) can be several hundred thousand dollars. This review is required as part of a trial proceeding conducted by the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) to determine whether claims made are patentable, based on prior art under section 102 and 103 of patent laws.
How Much Does an Inter Partes Review Cost?
A rough estimate of an IPR's cost is between $300,000 and $600,000. This cost is quite high but is still less than what it could cost to take legal action against a patent infringement in a federal court of law. The cost for this litigation often reaches between $1 million and $4 million. If an IPR happens, the fees from the USPTO alone start at $23,000. With such high costs in the six-figure range, it is critical to invest thoroughly in a search for prior art before beginning the process of filing for patent protection.
Many judges in federal courts have become more favorable to the suspension of a pending lawsuit around patentability. This suspension, referred to as a stay, allows the involved parties to wait for the results of an IPR. When this review begins, the process takes one year to complete. Defendants of patent infringement claims can defer the costs associated with litigation, including those related to the discovery and review of the patent claims made. The deferment will occur while the PTAB reviews the claims and performs the review.
IPRs: Balancing Effectiveness vs. Cost
An IPR is generally considered to be an alternative to litigation in a court of law that is more cost-effective than taking legal action. Although IPRs are cheaper than court cases, they aren't always sufficient to get the results needed, especially when they are single-petition strategies. However, strategies with multiple petitions can cost millions of dollars, eliminating the cost-effective benefit. The campaign's circumstances and the strategy of those involved in the patent process will determine whether an IPR is the right option for patent assertion claims.
When looking at the benefits of an IPR, the first thing to consider is the baseline cost. The cost of an IPR is usually in the six-figure range, often between $100,000 and $700,000. The exact cost depends on what stage of litigation is reached, although the cost still varies even when cases reach the same stage. One petition could be more expensive to file than what the total cost would be to reach a final decision on another petition. Specific circumstances within each case will drive the cost.
If a petitioner files a petition that is similar to an existing one and uses the same arguments from a previous IPR, this is called a copycat strategy. Using a copycat strategy can reduce the time required for a counsel to review the claim. Benefits include:
- Cost savings
- Counsel time savings, which reduces cost as well
The cost of litigation in a district court can often reach the seven-figure range by the time claims have been proven to be valid or not, which usually happens in a trial or at the summary judgment. The six-figure range for an IPR is certainly much cheaper than the cost of litigation.
Based on cost alone, the IPR strategy is more attractive than litigation. With a timeline of 12-18 months for an IPR, the amount of time it will take to resolve the claims is also more appealing than going through a lengthy court case. However, it's also important to consider the circumstances to determine whether litigation or an IPR is a better option.
Stays and Multiple Petitions
A single-patent litigation campaign could be simplified by an IPR petition. When the judge in a district court issues a stay for an IPR, this specific action is a faster and more cost-effective alternative to going through the entire litigation process, which will often require a jury verdict or summary judgment and require over $1 million in costs. However, if more than one patent is asserted in a case, the IPR strategy could add more costs as the PTAB reviews each of the claims. In a multiple-petition case, an IPR strategy might only address some of the issues.
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