Standing on the Edge: What Type of ‘Exclusive Licensees’ Should Be Able to Initiate Patent Infringement Actions?

International Review of Intellectual Property and Competition Law, Vol. 48, No. 6, 2017

University of Cambridge Faculty of Law Research Paper No. 14/2017

28 Pages Posted: 25 Jan 2017 Last revised: 13 Sep 2017

See all articles by John Liddicoat

John Liddicoat

University of Cambridge - Faculty of Law; University of Tasmania

Date Written: September 9, 2017

Abstract

In patent laws around the world, exclusive licensees often have standing to initiate infringement actions if the relevant patentee(s) is also added to the suit. Australian patent legislation specifies that exclusive licensees have this power and, correspondingly, the definition of ‘exclusive licensee’ clearly permits licensees to initiate infringement actions if they exclusively control the full complement of rights conferred by a patent. However, an important question remains: Does the definition of exclusive licensee include licensees that exclusively control only a portion of the rights conferred by a patent (e.g. to import and sell an invention but not make it)? The Full Court of the Federal Court of Australia has, through legislative interpretation, recently answered this question in the negative. Arguably, this interpretation is correct as a matter of statutory construction, but is it correct as a matter of patent policy? This article examines this final question via two approaches: (i) by extending the orthodox economic rationale for patents to the issue at hand, in particular by examining the role of exclusive licensing in market economies; and (ii) by evaluating the role of standing for exclusive licensees in the context of world patent harmonisation and the corresponding approaches in the UK and US.

Keywords: patent law, standing, enforcement, Australia, economic, United States, UK

JEL Classification: O34, O3, O31, K41, K11, O39

Suggested Citation

Liddicoat, Johnathon, Standing on the Edge: What Type of ‘Exclusive Licensees’ Should Be Able to Initiate Patent Infringement Actions? (September 9, 2017). International Review of Intellectual Property and Competition Law, Vol. 48, No. 6, 2017, University of Cambridge Faculty of Law Research Paper No. 14/2017, Available at SSRN: https://ssrn.com/abstract=2905761

Johnathon Liddicoat (Contact Author)

University of Cambridge - Faculty of Law ( email )

10 West Road
Cambridge, CB3 9DZ
United Kingdom

University of Tasmania ( email )

French Street
Sandy Bay
Hobart, Tasmania 7001
Australia

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