[Patents] Very basic patent question

[jtobey@john-edwin-tobey.org (John Tobey)]

On Thu, Dec 13, 2001 at 03:10:02AM +0100, Erik Moeller wrote:
> if a company holds a patent on an essential technology, and another
> company wants to be active in the same field, can the other company
> sue the patent-holder to get the patent declared invalid, before
> starting to work on an actual product, or does it have to be sued by
> the patent-holding company to get the patent contested in court?

I suspect that the answer to this varies by jurisdiction, but here is
an excerpt from a submission by Daniel Maddux to the W3C patent
discussion forum which may shed light on the U.S. situation:

    The cost of invalidating a patent versus licensing the patent may
    be an issue.  An ex parte Reexamination Request currently has a
    filing fee of US$2,520.00 (see the United States Patent and
    Trademark Office website at
    http://www.uspto.gov/web/offices/ac/qs/ope/1999/fee20011001.htm
    and look under Miscellaneous Patent Fees).  Inter partes
    Reexamination would be more expensive, US$8,800.00.  Attorney fees
    for filing a Reexamination Request would be roughly comparable to
    negotiating a RAND License or obtaining an Infringement Opinion
    for designing around the patent.  In addition, the W3C or others
    can petition the Commissioner of Patents and Trademarks to
    reexamine a patent on his/her own initiative, which would reduce
    the cost of reexamining the patent to 0.  Attorney fees for
    pursuing a Declaratory Judgment action to invalidate a patent
    would definitely be more expensive, provided the case went to
    trial.  However, a patent owner may choose to settle and RF
    license the patent rather than face the uncertainty of a trial and
    jury verdict.  Furthermore, filing a Declaratory Judgment action
    would have a deterrent effect on future patent owners not to
    unreasonably withhold licensing a patent that reads on a W3C
    standard.  Since the attorney fees for filing a Reexamination
    Request are roughly comparable to licensing or designing around a
    patent, and filing Declaratory Judgment actions to invalidate a
    patent have a deterrent effect on patent owners who refuse to RF
    license their patents, the cost of invalidating a patent versus
    licensing a patent may be an issue but does not rule out these
    options.

http://lists.w3.org/Archives/Public/www-patentpolicy-comment/2001Nov/0014.html
(a very entertaining two-hour read, in my pedantic opinion)

-- 
John Tobey <jtobey@john-edwin-tobey.org>