What this is going to cost you, and how long it takes
| The subject | The straight answer |
|---|---|
| Money | |
| What the money is actually buying | Almost all of it is people reading and writing. A patent dispute is a document problem long before it is a courtroom problem. Someone has to read the patent line by line, read every numbered claim at the end of it, read the entire back and forth between the applicant's lawyers and the patent office, read your own engineers' old files, and then write the arguments that come out of all that reading. Filing fees and court costs are a rounding error beside the hours. When a bill goes up it is because more people spent more hours reading and writing, and that is the thing to ask about. |
| What drives the cost up | Count the contested questions, not the size of the company. Each additional patent asserted, each additional product accused, and each disputed claim term adds work in a way that is close to arithmetic. A parallel challenge to the patent at the Patent Trial and Appeal Board opens a second front with its own clock and its own budget. Several unrelated technical fields mean several expert witnesses. So does an opponent who will narrow nothing and fights every routine request, and so does changing your own position late, because the earlier work then has to be done again. |
| What brings it down | Narrowing early, and the judgment to narrow correctly. Deciding at the start which arguments you will not make is the largest single lever, and only someone who genuinely understands the technology can tell which of them were never going to win. Reading the full prosecution history yourself is the other one. Applicants routinely give ground to get a patent granted, those narrowings are permanent and public, and they limit what the patent can be argued to mean years later. It is unglamorous work that many skip. Most disputes end in a negotiated resolution rather than a verdict, and the sooner a realistic view of the merits arrives, the less that resolution tends to cost. |
| What “it depends” actually depends on | It is a real answer, but only when the person saying it will tell you what it depends on. Which court, and how that court's judges tend to schedule patent cases. How many patents and how many claims are asserted. How many of your products are accused. Whether source code is in play. Whether the patent is also being challenged at the Patent Trial and Appeal Board. Whether the other side sells something or exists mainly to enforce patents. Whether an injunction is being sought, which changes what is at risk. And how much of your own technical record already exists in an organised form. Until someone knows most of those, “we do not know yet” is the truthful answer. |
| Why nobody will quote you a firm number | Because the honest ones cannot yet, and anyone who can is selling. Nobody can know the number before reading your patent, the claims being asserted against you, the record behind them at the patent office, and the court the case is sitting in. A figure produced before that reading is a guess in a good suit, and a guess delivered confidently is worse than an honest “not yet”. What you can reasonably require, once the reading is done, is a budget built phase by phase with the assumptions written down beside it. Then when an assumption breaks you are told why the number moved, rather than finding out from an invoice. |
| What a company can control | More than it feels like on the first morning. You control who you hire, and whether that person can read your technology without a translator standing between them and it. You control how quickly routine automatic deletion of email and files touching the accused product is suspended, which is both an obligation courts take seriously and a cost item, because reconstructing what was lost is expensive. You control whether someone calls the insurance broker early, since some business policies cover intellectual-property defense and late notice can forfeit that coverage. You control what counts as a good outcome, which is a business decision and not a legal one. And you control how many of your people are allowed to be in the middle of it. |
| Time | |
| Who sets the calendar | The court does. Not your lawyer, and not you. Once a case is filed the judge enters a scheduling order, and that order decides when the technical work, the depositions, the briefing on what the claims mean and any trial date fall. The one date that arrives before all of it is the response to a complaint, generally due 21 days after service in federal court, though waivers and extensions can move it. It is specific to your court and your case, so it is the first thing to confirm rather than the first thing to assume. |
| How long each phase tends to take | Nobody can give you a number of months before knowing your court and your case. What can be said is the shape. Early motions and the exchange of contentions come first, and they set the boundaries of the argument. Then the long middle, discovery, which is where most of the calendar and most of the money live. Inside or after it comes claim construction, sometimes called a Markman hearing, where a judge decides what the disputed words mean. Cases are frequently decided in substance by that ruling even though it is not a trial. A review at the Patent Trial and Appeal Board runs on a separate schedule alongside all of this. Any competent lawyer can pull your specific court's recent orders and tell you what that court has actually been doing. That is a real answer. A confident number produced before looking is not. |
| Where the time goes on your side | Into your engineers, mostly. The people who built the accused product are the people who have to explain how it works, find the old design files, and eventually sit for depositions and answer questions about both. Executives are pulled in at the decision points, and again if the other side wants their testimony. Someone has to own document collection, and it should be one named person rather than a committee. The quiet cost that never appears in a budget is the attention of the three or four people who cannot fully think about anything else while it is going on. |
| What you should be told, and when | Enough that a bill or a deadline never surprises you. Settle at the start how often you hear from counsel during the stretches when nothing visible is happening, who is doing the actual work and at what rate, and what specifically earns a phone call rather than an email. A month of quiet is not necessarily a month in which nothing happened, but you should not have to wonder which it was. |
A lawyer who turns work away is telling you something
One of the more useful things you can learn in a first conversation is whether the person across the table is willing to say no to you. Ask them directly what they would decline to spend your money on. Someone who cannot name a single thing is describing a case with no edges, and a case with no edges is a case where every argument gets made, every document gets fought over, and the budget is set by the other side's appetite rather than by your judgment.
The same signal shows up at the front door. A patent dispute about a chemical formulation should go to someone who reads chemistry, and a dispute about how a handset authenticates to a network should go to someone who has actually built or examined that kind of system. A lawyer who tells you that a matter is not theirs, and hands you a name, has just given you something more valuable than availability.
Cost discipline is not the same thing as being cheap. Cheap work in a patent case is expensive later, usually at claim construction, when the argument nobody thought worth preparing turns out to decide the case. Discipline means pressure applied at the points where it changes the outcome and nowhere else, which requires knowing the difference, which requires having read everything. That order matters. The reading comes first, and the restraint is only possible because of it.
Two clients, on cost
Both were written on LinkedIn and are reproduced in full, with permission. Read all seven at the source on LinkedIn.
I worked with Jesse on a high-stakes patent dispute that escalated quickly and required a focused, aggressive, and cost-conscious legal strategy. Jesse was excellent.
He developed a deep command of the patent history, understood the prosecution record better than the opposition, and identified weaknesses that materially changed the leverage in the case. He was also very effective at applying pressure at the right points, without letting the matter spiral into unnecessary cost or complexity.
What stood out most was Jesse's combination of technical understanding, strategic pressure, and cost discipline. His work helped put us in a strong position to resolve the matter on favorable terms.
I would highly recommend Jesse to any company facing a complex patent or IP dispute where the details matter, the stakes are high, and the legal strategy needs to create real leverage.
During my career as an in-house patent counsel, having a trusted relationship with outside counsel was essential. For over 15 years, I worked with Jesse on various patent prosecution and patent litigation matters. Jesse's legal advice is top-notch and his case management skills are excellent. He provides high quality and timely legal services at a reasonable cost.
A career in-house patent lawyer hires and fires outside counsel for a living, has seen the invoices from everybody, and chose the same person for more than fifteen years.
What to ask about fees, in the first conversation
Ask all of these, of everyone you interview, and write down the answers. The differences between the answers will tell you more than any of them will individually.
- How do you bill, and what would our first invoice actually itemise?
- After you have read the patent and the full prosecution history, will you give us a budget broken out by phase, with your assumptions written next to it?
- What would have to change for that budget to be wrong, and how quickly would we hear about it?
- Who will do the work, and at what rate?
- Will you read the patent's full prosecution history yourself, or have it summarised for you?
- What would you decline to spend our money on?
- How do you create pressure without letting the cost run away?
- Can you explain what this means for the business in language our board can use?
Reaching Jesse Camacho
Send a legal or professional inquiry through Practus, LLP
Call 816-343-4301
Email contact@jessecamacho.com
Jesse Camacho on LinkedIn
Kansas City, Missouri.