An International Guide to
Patent Case Management for Judges

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1.4 Interplay of multiple patent proceedings in different fora

Patents may be reviewed and enforced in different fora, at times comprising a complex and overlapping mandate of institutions.

Most countries provide for mechanisms to appeal a decision of the patent office to a judicial court. However, this is not an appeal in the strict sense and the court adjudicates the case de novo, unconfined by the arguments or evidence that were presented before the patent office.

In some jurisdictions, administrative proceedings challenging patent validity may run in parallel with civil judicial proceedings.75 For example, a defendant in a patent infringement lawsuit can assert the defense of invalidity in court, and in parallel request an administrative proceeding for invalidation before the patent office. The patentee may also attempt to correct the patent claims during patent infringement proceedings. Different scenarios then become possible. The infringement court may rule to: stay court proceedings pending review by the patent office;76 continue with the infringement proceedings, with the possibility of a finding of infringement for a patent that is subsequently invalidated by the patent office; or dismiss the lawsuit without waiting for the final result of the administrative case.77 In these circumstances, the erga omnes effect of the patent office’s decision invalidates the patent for all parties including those involved in parallel judicial proceedings.78 Accordingly, a decision by the patent office finding the patent to be invalid will result in the court deciding the patent infringement dispute to decide against the patentee. On the other hand, if the patent office finds the patent to be valid, a defense of invalidity may not be asserted in court on the same grounds.

In these situations, some jurisdictions have mechanisms to promote efficiency and coherence, to ensure that the claims made during the patent granting or invalidation procedure and the claims made during the infringement proceedings do not differ.79

In some jurisdictions, proceedings may occur in parallel in different courts, with parties opting for the more convenient forum and seeking to take advantage of the distinctive characteristics of various court venues. For instance, a patentee may file a patent infringement lawsuit in one court and the accused infringer may initiate a declaratory judgment action in another court. Then, the first case filed (usually the infringement action) will have priority and the second case may be transferred, postponed, or dismissed.80

Importantly, parallel judicial proceedings may be inherent to and envisaged through the design of the patent litigation system. One of the most important differences in patent litigation systems is whether they follow a unified or a bifurcated approach to handling patent validity and infringement cases. In a unified system, both validity and infringement are heard by the same court at the same time, with the defense of invalidity usually raised by the defendant to an infringement claim by the patentee. In a bifurcated system, the validity and infringement cases are dealt with in separate venues, and the defense of invalidity may not be accepted in infringement proceedings.81 The alleged infringer will concentrate on non-infringement defenses in one court while potentially seeking to invalidate the patent in another court. In these bifurcated systems, the infringement court has the discretion to stay infringement proceedings in view of a nullity action pending before another court.82 In some bifurcated systems, the infringement court may, however, rule on nullity of a patent when it is raised as an incidental question, in which case the nullity ruling would only have inter partes effect.83

In some jurisdictions, other quasi-judicial institutions may also play an adjudicatory role, for example, investigating complaints alleging patent infringement with respect to imported goods.84 Additionally, in jurisdictions with regional patents, national courts and regional courts may hold parallel proceedings, which can sometimes lead to differing outcomes and require specific management.85

Finally, parallel proceedings can take place between actions initiated in different countries. If a party receives an unfavorable decision in a court of one country, they may attempt to change the outcome of the dispute through an action in another country. A party may also request an order from a court perceived as more favorable, prohibiting the other party from commencing or continuing a parallel proceeding in another jurisdiction, known as an anti-suit injunction. This type of injunction is becoming more frequently utilized in certain patent disputes.

These scenarios, in which patent disputes occur concurrently in two or more venues, either within the same or with a foreign jurisdiction, necessitate the existence of rules and practices that govern their interactions.