While an exclusive licensee typically has the right to sue for infringement, it may nevertheless be unable to sue without joining the patent owner unless it has been granted “all substantial rights” under the licensed patent. An exclusive licensee may lack “all substantial rights” if the license agreement contains a fixed term shorter than the term of the patent and the licensor retains a reversionary interest in the patent. This may be true even if the license agreement allows for an extension of the license if the licensed patent is subject to ongoing litigation at the end of the fixed term. Thus, even if the licensor intends to convey to the licensee the right to file infringement suits in the licensee’s name, the licensee may lack standing to bring a suit without joining the licensor as a party.
June 26, 2012
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