Contributed By Gilat, Bareket & Co., Reinhold Cohn Group
If an application for revocation is filed with the Patent Office after a patent infringement action was initiated before a District Court, the Patent Office will not hear such application unless the court permits it.
Where a patent infringement action was initiated before the District Court at a time a revocation application was already pending before the Patent Office, the court has power to stay the proceedings before the Patent Office.
The court trying an infringement action may also stay the proceedings before it, pending resolution of a revocation action before the Patent Office (judges sometimes may encourage the parties to first resolve the validity issue by instituting revocation action before the Patent Office).
If the Patent Office revokes the patent, revocations act in rem. If the Patent Office dismisses the revocation action, the District Court is free to invalidate the patent (subject to the general rules of issue preclusion).