Good Advice?

Submitted by patentadmin on Tue, 02/23/2010 - 08:50

People are always offering free advice. Frequently, it’s worth about what you paid for it. Recently, a partner in a well-respected law firm offered advice to recipients of letters from “Patent Trolls” inviting the recipient to license one or more patents. The advice, simply stated, was to run to the Patent Office and petition for inter partes re-examination of the subject patent(s). Good advice? Well, maybe. Even the author concedes, “there is no one-size-fits all solution.”

The law firm author repeatedly refers to “unregistered so-called IP litigators (the ones who lack the requisite credentials to file or conduct reexamination proceedings)” or “non-PTO registered ‘IP litigators’” who have “allegedly promulgated” a “common misconception … that the reexam process is an unreliable alternative to litigation in Federal Court.” It would be interesting to consider the author’s own background. Is he, per chance, a non-litigating patent prosecutor?

In any event, the author notes that the cost of an inter partes reexam, inclusive of a prior art search and pre-exam invalidity and non-infringement analyses, is likely to run between $150K and $250K – no small sum when approximately half of reexamined patents survive. Certainly, reexamination is a course to consider but, as the author noted, no panacea.

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