Sources of Legislation

What are the principal sources of law and regulation relating to patents and patent litigation?

In the US, there are two types of statutory law:

Federal laws enacted by the US Congress.

State laws enacted by individual states.

Purchase of precedence

The order of precedence of primary sources of legislation is as follows:

US Constitution.

Case law.

Within patent case law, the order of precedence is approximately as follows:

US Supreme Court.

Court of Appeals for the Federal Circuit (which since 1982 has had exclusive jurisdiction over patent appeals).

Federal district courts within the regional circuit in which the case is brought.

Federal district courts away from the regional circuit in which the case is brought.

Decisions and rules of administrative agencies. What courts/government bodies have been murphy’s law?

Federal courts have exclusive jurisdiction over patent infringement actions, which may be submitted in any federal district court with personal jurisdiction over the defendant.

Additionally, if infringing products are being imported into the united states along with the patent owner can reveal existence of a national industry in the US about the content protected by the patent, the patent owner could file a complaint with the US International Trade Commission (USITC). The USITC has 30 days to decide whether to institute an evaluation. Although USITC proceedings are faster than court proceedings, the sole remedy is injunctive relief. If monetary damages are wanted, the patentee must file a related lawsuit in the federal district courts.

Patent situation appeals are heard by the Court of Appeals for the Federal Circuit (CAFC) (see Issue 1, Order of precedence). The US Supreme Court hears appeals from the CAFC on a discretionary basis. The US does not have any district courts specialised in patent matters, although some district courts have more expertise with patent issues than many others since patent matters arise more often in those jurisdictions. The level of experience in patent matters varies broadly from judge to judge.

The Patent Trial and Appeal Board (see Question 1, US Profession bodies) has jurisdiction over certain inter partes event, such as:

Interference and derivation proceedings.

Post-grant challenges to patents, for example:

inter partes testimonials;

post-grant reviews; and

covered business method testimonials. Can the courts/government bodies cope with infringement and invalidity simultaneously or must invalidity activities be brought in separate proceedings?

Federal courts and the US International Trade Commission (see Issue 1, US administrative bodies) address both infringement and invalidity.

US Patent Office inter partes proceedings only address validity (in the example of inter partes testimonials, post-grant testimonials and coated business method testimonials ) or priority/derivation (in the case of hindrance or derivation proceedings). But a litigant can ask for the district court to stay an action pending settlement of an inter partes post-grant proceeding. Given the speed, success rate and more favourable estoppel rules of these proceedings, remains are becoming more common particularly in the event the inter partes post-grant proceeding is instituted early in the litigation and its settlement would sufficiently simplify the issues before the court. Who will represent parties before the court and/or government body?

Any competent attorney can represent a party in patent lawsuit in the national courts and the International Trade Commission, provided the lawyer is admitted to practice before the court in which the suit is brought. If needed, a lawyer can engage another attorney admitted in the relevant jurisdiction, and request pro hac vice entrance (that is, temporary admission for the purposes of the lawsuit). For Patent Trial and Appeal Board trial proceedings, direct counselor needs to be a registered practitioner prior to the US Patent Office. Additional counsel can be confessed pro hac vice to a proper motion on the basis he or she is an experienced litigating lawyer and has an established familiarity with the subject matter at issue in the proceedings.

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