The Federal Circuit has held that a “bare licensee” of a patent cannot obtain standing in an infringement suit even by joining the patent owner. In Propat v. Rpost, the court determined that Propat, as the licensee, had no proprietary interest in the patents involved. The patent had been assigned to Authenticational Technologies Ltd. (“Authentix”) by the inventors. A May 2002 agreement between Propat and Authentix had conveyed to Propat the tasks of licensing the patent to third parties, enforcing the licensing agreements, and suing infringers, for which Propat was to receive a share of the proceeds from royalties or of any fruits of litigation. Ordinarily, a “patentee,” who under 35 U.S.C. § 281 may bring a civil action for patent infringement, includes “not only the patentee to whom the patent was issued but also the successors in title to the patentee.” 35 U.S.C. § 100(d). A patentee may effect a transfer of ownership for the purpose of standing if it transfers all substantial rights in the patent. Agreeing with the district court that the parties’ 2002 agreement did not assign to Propat the right to make, use, and sell the invention, however, the Federal Circuit found that the agreement did not transfer all substantial rights in the patent. Instead, the Court found that the agreement made Propat merely a “bare licensee” under the patent without standing to sue.
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Patent licensee cannot obtain standing by joining patent owner - Propat International Corp v Rpost Inc
- Edwards Wildman Palmer LLP
- Kathleen Carr and Elizabeth Anderson Spinney
- April 17 2007
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