Share on Facebook
Share on Twitter
Share on LinkedIn
By J.D. Houvener
Patent Attorney and Founder

Everyone, did you know that there’s a big difference between patent prosecution and patent litigation? Hi, I’m J.D. Houvener, owner and founder here at Bold Patents Law Firm, and we’re going to go through the differences between prosecution and litigation when it comes to patenting and what you can expect along six different categories.

The first one: the nature. What’s the nature of patent prosecution? Well, prosecution means the getting of the patent, so there’s a lot that goes into getting a patent for your invention. First and foremost, research, application drafting, then you submit it to the patent office and the USPTO examiner gets their hands on it. They’ll do their own search, perform an examination, and usually about 90% of the time they’ll find something to reject. So, this is the prosecution phase where the attorney that’s representing you, the inventor, will help you put together legal arguments or structure changes, amendments to the application, usually to the claim language, to get around the examiner’s rejections or objections. This could happen two, three, or more times from the USPTO examiner. Now, this process can take upwards of a year to two years before your patent is granted. So, all that time from invention disclosure all the way through patent searching, applications, and office actions, that’s called patent prosecution.

Now, once your invention and once your product hits the market, this is when litigation can come into effect when you have to enforce. So, the nature of patent litigation is when there is infringement or even alleged infringement, that’s when pre-litigation can begin. This phase is where you start conducting infringement opinions or going forward and starting to talk about whether the patent itself is valid under the current laws. It’s true that a patent can get through the prosecution phase and get granted but still be subject to different laws that patent law can change. One of the biggest ones I can think of was about 10 years ago when abstract ideas or software that was merely human activity now on the Internet is invalid. So, all this time before 2014, patents were getting granted for software that was truly abstract and the law hadn’t changed until 2014 in Alice for CLS Bank in a landmark decision that says, you know what, all those patents that were issued before, they can be invalidated now anyway. So, that’s pre-litigation where patents are subject to infringement validity, invalidity questions and once you get to Federal Court, that’s when a patent holder is suing and would-be infringer not just to stop them from making using or selling their invention but to seek damages. Now, litigation can also extend to customs using the ITC International Trade Commission and Customs so at the border stopping products from moving into the country to be sold. This actually really famously just came up a few months ago where Apple got in trouble with their Apple watch, the O2 sensor inside their watch was an infringement on a patent that was owned separately and so because that component is within that watch Customs stopped the whole shipment of all the watches into the US it’s a huge happening right now.

What’s the objective? Well, patent prosecution, the objective is to get a patent. Patent litigation, the objective is to get money or stop the infringement so an injunction is to prevent the activity of another party that might be infringing making using or selling a product that’s patented. Now, the time frames are different too, let’s look at that. So on the patent prosecution side, like I said, it could take up to 2 years plus just to get the patent granted. Now, patent litigation, you can also say could take a long time too but usually the threat of litigation is what actually gets the most oomph, right, most bang for the buck. Inventors, you know, companies on either side, they don’t want to just pay the attorneys to go to court, they’d rather handle it much more efficiently through settlement. So within 6 to 9 months typically a patent infringement case can be settled outside of Court.

Let’s talk about cost. So, cost is important to you, the inventor, to research, apply for, go through all those different office actions, you can plan to spend between 10 to 30 or 40 Grand acquiring a patent portfolio. Now, the cost on the litigation side, can depend dramatically on the low end it could be as simple as a few thousand sending a cease and desist letter and now you have no more infringe then again on the other side it could be a drawn-out legal trial that could be in the hundreds of thousands of dollars approaching a million dollars let’s say if it goes to the federal court or even to the Supreme Court.

Now, complexity, there are different layers of complexity on the prosecution side it’s much more technical, it’s about is this invention truly novel so all the details with respect to what it is at its very finite level to compare have this been done before so that’s what the attorney will work with you and the inventor on is articulating all those different nuances applications and details on the litigation side the complexity is not so much technical so much as it is about the legal right the facts the evidence and even sometimes expert Witnesses their opinions as to whether there’s really use or what the term is in the claim and analyzing that term specifically to what that matches the product that’s on the market there’s also of course the judicial complexity with procedures submitting evidence you know generating court documents and pleasing the judge whatever route they want to go.

So last major section is what’s the role of a patent attorney in either one of these on the prosecution side it’s giving an opinion first and foremost on what should file a patent application a patent attorney can give you that legal opinion that insight into to what the examiner might find once you spend that time and energy filing an application on the other side a patent attorney can represent you in court they can also be right there by your side helping you make decisions on do I send a cease and desist letter do I settle or do I go for it and try to reach a pinnacle of Damages a certain set of you know goals at the judicial level.

So, I hope you learned something about the difference between patent prosecution and patent litigation today. I’m J.D. Houvener, owner, founder here at Bold Patent Law Firm wish you guys a great day go big go bold.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at