APRIL 2002
Getting over the patent licensing hurdle
When do licensees have independent standing to sue for infringement in the US?
Jasper W Dockrey and Jonathan M Blanchard review how the courts have treated this question and provide some guidelines for licensees and licensors
The issue of a licensee's standing to bring a patent
infringement lawsuit independent of the licensor has been addressed
in several decisions by the Court of Appeals for the Federal
Circuit. These decisions focus on the language of the licence
agreement that controls the relationship between the licensee and
the licensor. The Court's stated purpose is to determine the extent
of rights transferred to the licensee. Under the crucible of
litigation, the probability of the licensee having independent
standing to sue increases as the licence "looks" more and more like
an assignment. (In Intellectual Property Dev, Inc v TCI
Cablevision of Calif, Inc, 248 F 3d 1333, 1344 (Fed Cir 2001),
the court held that whether an agreement uses the term "license"
rather than "assignment" is not determinative of the rights
transferred by the agreement.)
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