USA Law and Practice Contributed by: Steven Lieberman, Joseph A Hynds and Jennifer P Nock, Rothwell, Figg, Ernst & Manbeck PC
2. Initiating a Lawsuit 2.1 Actions Available Against Infringement
PGR PGR is available during the first nine months after the issue of a patent. Any party that is not the patent holder and has not challenged the patent validity in a civil action may request PGR. PGR allows the broadest grounds for challeng- ing patent validity. IPR After the nine-month window of PGR, a third party may challenge validity through an IPR proceeding. As is the case with PGR, the IPR petitioner must not be the patent holder and must not have challenged the patent in civil litigation, but there is an additional requirement that the petitioner must not have been served a complaint alleging infringement more than one year prior to the IPR petition. The IPR also has more limited grounds to challenge patent inva- lidity, only allowing arguments of obviousness and lack of novelty based on patents and printed publications. CBM A CBM review has the most restrictive require- ments: at least nine months must have elapsed since the patent was issued; the patent must be a financial product or service patent, exclud- ing technological inventions; the CBM petitioner must have been sued or charged with patent infringement; and the CBM review petition must have been filed before 16 September 2020. The grounds for challenging patent validity in a CBM review are similar to those of PGR. There are no actions available in the USA for a compulsory licence. 2.3 Courts With Jurisdiction Federal district courts have original jurisdiction over patent matters. Parties may appeal district court decisions to the US Court of Appeals for
A patent holder has several options when seek- ing enforcement of patent rights. District court litigation can provide injunctions, monetary remedies for infringement and declaratory judg- ments. As discussed at 1.5 Rights and Obli- gations of Owners of Intellectual Property Rights , the ITC can issue exclusion orders and cease-and-desist orders. If an applicable con- tract provides for alternative dispute resolution proceedings, such as mediation or arbitration, or the parties agree to alternative dispute res- olution proceedings, they may be used in lieu of litigation. Alternative dispute resolution pro- ceedings can allow more flexible solutions and a final resolution can often be reached faster and less expensively. Additionally, the ITC and many courts offer mediation programmes. 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property A third party may challenge the validity of an issued patent through district court litigation or through post-grant proceedings at the USPTO. A party with standing may seek a declaratory judgment of patent invalidity in a district court. As a defendant in a patent infringement lawsuit, a party may argue patent invalidity as a coun- terclaim or affirmative defence. Patent invalid- ity may also be raised as a defence in an ITC investigation. Challenges to patent validity at the USPTO take the form of post-grant review (PGR), IPR, ex par- te re-examination and covered business method review (CBM). The timing and type of patent affect which of these proceedings is available to a third party.
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