District Court v. USPTO v. ITC: Strategic Considerations in Choosing a Patent Litigation Venue

District Court v. USPTO v. ITC: Strategic Considerations in Choosing a Patent Litigation Venue

 “Location, location, location.” That familiar mantra is usually associated with real estate agents, but those in the legal profession could just as easily claim it. Choice of venue, when that’s possible, can influence the outcome of a case.

Take patent litigation, for example. In the past, attorneys often have had the option of going before either the U.S. International Trade Commission (ITC) or a district court. One venue might be preferable to the other for a variety of reasons.

Now another option is available to prepare for, launch or respond to litigation. As a result of the third and final wave of provisions of the Leahy-Smith America Invents Act (AIA) coming into effect in March 2013, newly expanded or revised proceedings in the U.S. Patent and Trademark Office (USPTO) may provide valuable alternative forums for determining the validity of patents in a dispute.

Litigators and others involved in patent disputes will certainly want to be aware of how the USPTO provides a number of viable choices. Both the patent owner and the accused infringer need to calculate what is the best available venue for their case. To that end, weighing the factors that are most important in a specific case and choosing the venue that offers the best possible outcome for that case will be one theme in an upcoming Webinar featuring a leading authority in U.S. and international intellectual property law.

More Art Than Science

Ethan Horwitz is a partner at King & Spalding, an international law firm that represents a broad array of clients, including half of the Fortune® Global 100. With over 25 years of experience in the full range of intellectual property law, Horwitz maintains a diverse practice in the firm’s New York office.

He is also the author and/or editor of several prominent treatises in the IP field, including Horwitz on Patent Litigation (originally published in 1971 as Patent Litigation: Procedure & Tactics), Intellectual Property Counseling and Litigation and World Trademark Law and Practice, all published by Matthew Bender & Co., a member of LexisNexis®. His articles appear in such publications as The National Law Journal®, the New York Law Journal®, Managing Intellectual Property™ and Metropolitan Corporate Counsel®.

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