Patent litigation can be overwhelming for anyone, whether you’re an entrepreneur defending your innovative product or an inventor protecting your intellectual property. The complexities of patent law, and the high stakes of patent infringement cases make choosing a knowledgeable attorney crucial.
This guide answers frequently asked questions about patent litigation. It provides insight into the key questions you should ask a potential patent litigator. By the end of this post, you’ll understand what to look for in a law firm and how the right attorney can make all the difference in your case’s outcome.
Key Questions to Ask a Patent Litigation Attorney
Before engaging a patent attorney, asking the right questions is critical. Doing so ensures you’re partnering with someone who understands your technology, business goals, and the nuances of patent law.
1. What is your litigation strategy in patent cases?
Patent litigation isn’t a one-size-fits-all approach. Attorneys often differ in strategies, ranging from aggressive motions to long-term evidence gathering. Ask how they plan to align their strategy with your business goals. For example:
- Will they pursue early dismissal motions or focus on comprehensive discovery?
- How do they approach negotiations, settlement discussions, or risk management?
An attorney with a tailored plan will significantly impact your case’s efficiency and outcome.
2. Do you have experience in our specific technology area?
Every patent case is unique, and familiarity with your industry is vital. Significant experience litigating is a must. However, an experienced patent attorney who is knowledgeable in your field is an invaluable resource. Whether your patent covers semiconductors, pharmaceuticals, or software, evaluating their technical knowledge is essential. Questions to consider:
- Have they handled cases involving similar technologies?
- What were the outcomes of those cases? Were the patents upheld or invalidated?
A law firm with relevant technical expertise can better argue the validity of your claims and address the nuances of your patent.
3. Who will be handling my case?
Larger law firms often have a deep bench of personnel, so it’s essential to know who will be directly involved in day-to-day tasks. Key questions include:
- Who will argue in court, and who will manage filings and discovery?
- What’s the partner-to-associate ratio?
- Can they provide bios of the litigation team members?
Understanding the experience and roles of your team ensures cohesive case management and prevents surprises later.
4. What are your fees, and can you provide a budget estimate?
Intellectual property litigation can be expensive, but transparency is a must. Your attorney should clearly outline their fee structure:
- Do they offer hourly rates, flat fees, or success-based pricing?
- How do they address cost predictability during the patent litigation process?
- Will they provide regular breakdowns of fees or updates on costs?
Some firms also use litigation budgeting software to ensure accuracy and transparency in managing expenses.
5. Do you have experience with inter partes review (IPR) and PTAB proceedings?
Patent litigation increasingly involves proceedings before the Patent Trial and Appeal Board (PTAB), such as inter partes reviews (IPRs). Ensuring your attorney can handle both district court litigation and PTAB matters effectively is critical.
- Can they coordinate strategy across both venues?
- Do they have a track record of IPR outcomes?
The experience here can dramatically influence your case, especially if invalidating a patent claim is a priority.
6. Have you litigated against opposing counsel or in this jurisdiction?
Patent cases often hinge on an attorney’s familiarity with local jurisdictions, judges, and even opposing counsel’s tactics. Ask if they’ve:
- Worked in the jurisdiction where your case will be tried.
- Litigated against the opposing counsel’s firm before.
This insight into local nuances and opposing strategies enhances their ability to prepare a successful case.
7. What is your trial experience and track record?
Many patent cases settle before reaching trial, but you must be prepared. A seasoned trial attorney can significantly raise your chances of success should the case make it to court. Key things to ask include:
- How many patent cases have they tried to verdict?
- Can they share examples of cases they’ve won or settled favorably?
- Were the patents in question upheld, invalidated, or deemed infringed?
This information helps assess their ability to represent you under the highest stakes.
8. How do you handle discovery and document review efficiently?
Discovery can be one of the most time-consuming parts of the process. Attorneys should have strategies to streamline it cost-effectively:
- Do they use AI tools or contract attorneys to manage costs for document review?
- How do they ensure privilege protection while reviewing sensitive materials?
An organized approach to discovery can prevent unnecessary delays and minimize costs.
9. Can you manage litigation across multiple jurisdictions?
International businesses often deal with patent litigation in multiple jurisdictions. If this applies to you, you’ll need a law firm with experience coordinating cross-border litigation or cases in different states. Ask if they can:
- Manage cohesive strategies between jurisdictions.
- Handle complexities like differing laws or ITC proceedings.
Consistency across jurisdictions is critical to avoid conflicting outcomes.
10. How will you communicate with me throughout the case?
Ongoing, clear communication is essential in patent litigation. Your attorney should offer updates and transparency. Consider asking:
- Will they provide regular written updates, status dashboards, or case briefings?
- How often will they connect with you for updates?
Effective communication ensures you’re always informed and aligned.
11. Do you have relationships with expert witnesses?
Strong expert witnesses, technical experts, or damages specialists can make or break a patent case. Determine if your attorney:
- Maintains relationships with experts in your field.
- Can quickly identify and vet new experts relevant to your case.
The right experts can provide critical insights and bolster your arguments during the trial.
12. What is your approach to settlement and risk management?
Settlement and risk management are important considerations in any legal matter, including patent cases. Regarding settlement, you want an attorney who will work diligently to reach a favorable outcome for your case while also being realistic about the risks involved. Ask your attorney:
- How do you approach settlement negotiations?
- What factors do you consider when evaluating settlement offers?
- Can you provide examples of successful settlements you have achieved for clients?
In terms of risk management, a skilled patent attorney should be able to identify potential areas of weakness in your case and develop strategies to mitigate those risks. They should also keep you informed about the potential costs and benefits of different legal actions or decisions throughout the course of your
Making an Informed Decision
Choosing the right patent litigation attorney can make all the difference in the outcome of your case. By asking the questions above, you can ensure you’re aligning with a law firm that understands your needs, your industry, and the nuances of patent law.
A knowledgeable, experienced attorney who values transparent communication and strategic insight is at the heart of every successful patent case. Don’t hesitate to thoroughly vet your candidates to find the fit for your goals.
Patent litigation may be complex, but you don’t have to face it alone. With the right partner, you can protect your intellectual property, defend against infringement claims, and secure your competitive advantage.
Looking to Protect Your Intellectual Property?
Please contact Arlen Olsen at Schmeiser, Olsen & Watts LLP at aolsen@iplawusa.com.
About the Author
Mr. Olsen, a former adjunct professor of intellectual property law, has over 25 years of experience in all aspects of intellectual property law. Mr. Olsen is a founding Partner of Schmeiser, Olsen & Watts LLP and a former United States Patent Examiner. Mr. Olsen has prosecuted numerous patents that have been litigated and received damages of over 60 million dollars. Additional activities include teaching seminars, appearing as a guest lecturer on intellectual property matters for corporations and educational institutions, and evaluating and consulting with clients regarding the scope, enforcement, and protection of intellectual property rights.
