CONDUCT OF PATENT LITIGATION: JURISDICTION AND PROCEDURE
Patent rights may be enforced through negotiation, mediation, and through arbitration [in 1983 an amendment to the Patent Act ( 35 USC 294) dealing with arbitration of patent disputes went into effect]. These procedures depend either on the consent of the parties or of an arbitrator. In the absence of such consent, the primary procedure for enforcing patent rights and resolving other patent disputes is through litigation in the courts.
Three basic requirements govern whether a patent suit is filed in a proper court: (1) subject matter jurisdiction, (2) venue, and (3) jurisdiction over the person.
Federal courts are courts of limited subject matter jurisdiction. Thus, the party filing the suit must affirmatively show a statutory basis for the court's jurisdiction over the controversy. By statute ( 28 USC 1338), the federal courts have exclusive jurisdiction over all suits arising under any Act of Congress relating to patents. However, the courts distinguish between patent cases and patent questions. An example is a suit for breach of a patent license in which the validity of the underlying patent is raised as a defense. Such suits may be filed in a state court of general jurisdiction. They may be filed in a federal court only if some other basis for jurisdiction can be found, such as diversity of citizenship.
A separate jurisdictional requirement is that there be an actual ripe controversy between the parties. The "actual controversy" requirement