Although you might not think so, given the proliferation of
litigation, courts are actually very particular about who can bring
a lawsuit. In order for a plaintiff to file a lawsuit, it must have
'standing' or put another way, "A court may exercise
jurisdiction only if a plaintiff has standing to sue on the date it
files suit." A recent US case examined when a patent
licensee has standing to sue for patent infringement.
According to the US court in Luminara Worldwide, LLC v.
Liown Electronics Co.: Even if the patent holder does not
transfer formal legal title, the patent holder may effect a
transfer of ownership for the purposes of standing in a lawsuit if
it conveys "all substantial rights in the patent to the
transferee." One of those "substantial rights" must
include an "exclusive license" to practice the patent in
question. In the event that a licensee obtains an exclusive license
and all substantial rights, then the licensee is effectively
treated just like a patent owner, and has standing to sue for
infringement in its own name.
When negotiating patent licenses, ensure that you pay attention
to the grant of rights. Do you intend to grant rights to permit the
licensee to sue in its own name, or should that right be reserved
to the patent owner / licensor?
In Canada, compare the finding of the Federal Court in the
copyright context in Milliken
& Co. v. Interface Flooring Systems (Canada) Inc.(FC):
"A non-exclusive licensee does not derive any right, title or
interest in the copyright that could give it the standing to sue.
It has no right to sue alone in a copyright infringement
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about your specific circumstances.
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The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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