Under 35 U.S.C. § 281, a “patentee” has standing to pursue an infringement action. An exclusive licensee, however, can be considered a “patentee” where “all substantial rights” in the patent are transferred to the licensee. In Alps South, LLC v. The Ohio Willow Wood Co., Nos. 2013-1452, -1488, 2014-1147, -1426 (Fed. Cir. June 5, 2015), the Federal Circuit held that Alps lacked standing to pursue an infringement action without joining the patent owner. The Court found that the license agreement was a “field of use” license that did not transfer all substantial rights to Alps because the agreement restricted Alps’s rights to the field of prosthetic products.
Attempting to cure this jurisdictional defect, Alps executed an amended license agreement, which eliminated the field of use restriction and purported to be effective as of the date of the original agreement, before the complaint was filed. While the Court recognized that an exclusive licensee may avoid dismissal for lack of standing by joining the patent owner under Rule 21 of the Federal Rules of Civil Procedure, the Court declined to expand this practice to permit a plaintiff to cure a standing defect by executing a retroactive license agreement after filing a case.