Intellecual Property: Licensing - Recent Developments

Propat International Corp. v. RPost, Inc. (Federal Circuit, January 4, 2007)

Patent Rights Allocated to a Licensee Did Not Make It an Assignee

Structure your client’s patent licensing in a manner consistent with the business objectives as well as future patent-enforcement goals. If the patent owner doesn’t want to be involved in any patent-enforcement actions, it should provide all substantial rights to its licensee. The rights allocated to Propat were not sufficiently substantial to make Propat the assignee of a patent owned by Authentix, the court found, and so Propat lacked standing to sue alleged infringers even when Authentix was joined a party-plaintiff. In affirming, the Federal Court found that Authentix retained sufficient rights because it remained owner of the patent, retained an economic interest in it, and kept significant rights in the patent. Click here for full version.