Paul Brunsvold
John Paul

PATENT LICENSEE DOES NOT HAVE STANDING TO SUE FOR PATENT INFRINGEMENT DESPITE BEING GRANTED EXCLUSIVE RIGHT TO SUE FOR COMMERCIAL INFRINGEMENT

Generally, only the owner of a patent may bring a suit for patent infringement. A licensee may bring suit, however, if the rights they have been granted are tantamount to an assignment of the patent. In order to determine whether a license agreement should be treated as an assignment, the courts look to whether the licensee has been granted “all substantial rights” in the patent. In Sicom Systems Ltd. v. Agilent Technologies., Inc., No. 05-1066 (Oct. 18, 2005), the Court of Appeals for the Federal Circuit held that a licensee who had been granted the exclusive right to sue for commercial infringement was not granted “all substantial rights” because the patent owner had retained the right to permit infringement in certain cases, because the agreement required either the patent owner’s consent to litigation or that the patent owner be consulted on the litigation, depending on the circumstances, and because the agreement could not be assigned.