Recent Decisions In The United States: A Recurring Feature

Originally published in Les Nouvelles, March 2006

Generally, only the owner of a patent may bring a suit for patent infringement. A licensee may bring suit, however, if the rights they have been granted are tantamount to an assignment of the patent. In order to determine whether a license agreement should be treated as an assignment, the courts look to whether the licensee has been granted "all substantial rights" in the patent. In Sicom Systems Ltd. v. AgiIent Technologies., Inc., No. 05-1066 (Oct. 18, 2005), the Court of Appeals for the Federal Circuit held that a licensee who had been granted the exclusive right to sue for commercial infringement was not granted "all substantial rights" because the patent owner had retained the right to permit infringement in certain cases, because the agreement required either the patent owner's consent