Might No One Have Standing To Bring Suit?

Licensing is an integral part of today's business strategy and patent portfolio management. While the licensor and licensee can divide between them the variety of rights associated with a patent, it is important to understand that express language conferring a right is not necessarily effective. The right to sue those who infringe a patent has proven to be particularly troublesome to transfer by way of license agreement.

A recent Federal Circuit ruling, Morrow v. Microsoft (06-1512; Sept. 19, 2007), highlights one such example of a trap for the unwary. The opinion clearly implies that dividing the rights to a patent can create the situation that neither party has sufficient rights to enforce the patent.