Preface
This brief note is not legal advice and is for educational purposes only.
Discussion
So you have a patent that you believe someone is infringing and you want to sue to stop the infringement and recover damages.
Your right to sue is called “standing”.
So, do you have standing to sue? It’s a serious question because if you don’t you’ll get kicked out of court fast for lack of standing.
If you are the inventor and have not licensed or sold the patent to anyone, you can sue.
If on the other hand you have made an exclusive license with, say, company or person X, you do not have the right to bring an infringement suit. Only X can sue because they have all the rights that go along with the patent.
So how do you grant some rights to X and retain the right as the inventor to have standing to file for patent infringement?
First and foremost, course of conduct (or dealings) does not trump signed written agreements. Federal courts (where all patent issues are tried) prefer written documents over he said, she said situations. For example, an implied license (where a chain of title does not exist) is an uphill battle that you likely will lose. Get it in writing.
A bundle of rights go along with the patent grant (among them is the right to exclude others from practicing the patent, this is a constitutional right), and most of the time all the rights get transferred when there is a patent assignment. That’s why an exclusive licensee gets the right to sue for infringement.
Now if you license X to use the invention in the patent but X cannot exclude others from using it, then guess what? You guessed right, X cannot bring suit.
However, you may want the best of both worlds—that being: 1) granting a licensee the rights under a patent to make, use, sell, and generally use the patent for commercial purposes, and 2) retaining the rights to sue for infringement. Well, you can’t have it directly because you have not granted the licensee the right to exclude.
However, an agreement can be constructed where the right to exclude is with X initially, and if they do not pursue an infringement brought to their attention, you have a right to sue. However, you must bring X in as a party in the suit by joining them. Now all the rights are in the plaintiffs and this case can proceed (constitutional and statutory standing are satisfied).
Further reading:
35 U.S.C. § 281
A.L.M. Holding Company v. Zydex Industries Private Limited, 1:24-cv-00363 (D. Del.)
Mentor H/S, Inc. v. Med. Device All., Inc., 240 F.3d 1016
Spokeo, Inc. v. Robins, 578 U.S. 330, 338 (2016)
Textile Productions, Inc. v. Mead Corp., 134 F.3d 1481
Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870 (Fed. Cir. 1991)
Waterman v. Mackenzie, 138 U.S. 252, 255 (1891)
Summary
Talk to your attorney BEFORE you send any letters or decide to sue.
