Assignment of All Substantial Rights and Standing to Sue

Addressing a party’s standing to sue for patent infringement, the U.S. Court of Appeals for the Federal Circuit further clarified the relationship between an assignment of patent rights and the assignee’s standing to sue for patent infringement without joining the assignor. Sicom Systems Ltd. v. Agilent Technologies, Inc., Case No. 05-1006 (Fed. Cir. Oct. 18, 2005) (Prost, J.).

This case was the latest in a series of patent infringement cases brought by Sicom in an effort to enforce a U.S. patent that when issued was assigned to the Canadian government. Four years later, Sicom licensed the patent from Canada in an agreement under which Canada retained a number of rights in the patent.

After an attempt to sue Agilent for infringement of the patent was dismissed for lack of standing, Sicom and Canada amended their license agreement to give Sicom "(1) the exclusive right to ‘initiate commercial infringement actions’ related to the patent; (2) an extension of the term of the Agreement