Which parties have standing to bring a patent infringement action? Under which circumstances will a patent licensee have standing to bring an action?

Patent Litigation

Australia Small Flag Australia

An action for patent infringement can be brought by either the patent owner or the exclusive licensee of a patent. An exclusive licensee must have exclusive rights with regard to all aspects of exploitation e.g. manufacture and sale.

Austria Small Flag Austria

Each patentee has a right to sue. This means that if the patent is held by more than one person, each patentee independently may bring a suit against an infringer (Sec 27 para 3 PA).

Also an exclusive licensee and a (non-exclusive) licensee with an express right to sue may bring a patent infringement action. The license agreement must neither be in writing nor be registered with the patent register. However, since the existence of the license agreement must be evidenced in infringement proceedings to prove standing, both can be useful.

Brazil Small Flag Brazil

(i) The patent holder, (ii) the exclusive licensee or a non-exclusive licensee if the license agreement grants the licensee power to enforce the patent; (iii) any party with procedural interest to defend the patent with powers to defend it on its behalf.

Canada Small Flag Canada

A patentee and all persons claiming under the patentee can bring an infringement action. A person claiming under the patentee is someone who whether as a user, assignee, licensee or lessee has a title or a right that can be traced back to the patentee.
Where a person claiming under the patentee brings a patent infringement action, they must include the patentee as a party to the litigation – either as a plaintiff on consent, or as a named defendant.

China Small Flag China

Any patentee or interested party may bring a patent infringement action. According to Article 1 of Several Provisions of the Supreme People's Court for the Application of Law to Stop Infringement of Patent Right Before Instituting Legal Proceedings, the interested party refers to the licensee of the licensing contract for exploitation of patent and the legal heir to the property right of the patent, etc. Among the licensees of the licensing contract for exploitation of patent, the licensee alone of an exclusive patent license contract may bring an action; the licensee of a sole exclusive patent license contract may bring an action when the patentee does not. As for the licensee of an ordinary patent license contract, the court generally would require the licensee bring an action along with the licensor.

Czech Republic Small Flag Czech Republic

The patent owner can enforce.

A licensee can enforce once the licence is registered by the IPO and if the licence authorises the licensee to enforce, or the licensee informs the owner of the infringement/threat of infringement and the owner does not begin enforcement within 1 month of such notification.

France Small Flag France

IPC does not contain specific provisions on whom has standing to commence a patent invalidity action. Reference should thus be made to Article 31 of the Code of Civil Procedure providing that "the action is open to anyone who has a legitimate interest in the success or rejection of a claim".

In practice, the claimant for invalidity action is most often a competitor who enacts to free the market and avoid the risk of a possible infringement action against its future product or process.

Germany Small Flag Germany

Under German law, there is generally no procedural step that must be satisfied before filing of a patent infringement action. However, in some cases it seems advisable to send a formal warning letter requesting the alleged infringer to voluntarily refrain from the infringing activity and threatening legal proceedings. While this course of action is not mandatory, it may reduce the cost risk, if the other party immediately fully accepts the asserted claims (which is rarely the case, of course).

From a risk perspective, it is advisable for claimant to investigate and procure all facts and evidence of the infringement in detail already prior to the litigation. As there are no disclosure obligations, it is up to the claimant to present a substantiated case in the statement of claim, including any evidence (German proceedings are “front-loaded”).

The general limitation period is three years with knowledge of infringement, starting at the end of the year, and ten years without.

Greece Small Flag Greece

21. Entitled to bring a patent infringement action is the patent owner, the exclusive licensee, whoever has a right on the invention, as well as the owner of a pending patent application. In the latter case the court may postpone the trial until the grant of the patent. According to the leading opinion, in order for the exclusive licensee to have standing to bring an action, the licence must have been recorded at the Greek Patent Office.

India Small Flag India

a) Article 88 of the Limitation Act, 1963 provides a period of limitation as three years from the date of infringement and not from the date of the grant.

b) Procedural steps before a patent action can be instituted:

  • There are no pre-requisites that must be satisfied before a patent infringement suit may be instituted. There are some procedural steps while filing a patent infringement suit.
  • However, in case of a declaratory suit under Section 105 of the Patents Act, 1970, there the said person claiming such a relief must show that he has in writing sought for written acknowledgement from the patentee or his exclusive licensee to the effect of such a declaration so claimed and has also furnished him full particulars of the process or article in question, and; the patentee or his exclusive licensee has refused or neglected to give such an acknowledgement.

Ireland Small Flag Ireland

Actions for patent infringement may be brought by either the patent proprietor or the exclusive licensee in its own right. In particular, section 51 of the Patents Act provides that the exclusive licensee “shall have the like right as the proprietor of the patent to take proceedings in respect of any infringement”.

When the exclusive licensee brings the action, the proprietor, unless joined as a co-plaintiff, must be named as a defendant in the proceedings. Similarly, where any co-proprietor does not concur in the bringing of infringement proceedings by another co-proprietor, the non-concurring co-proprietor must be joined as a defendant. The purpose of joining such parties as defendants in this way is to give them notice of the action: however, they will not be liable for any costs unless they enter an appearance and take part in the proceedings.

Non-exclusive licensees do not have standing to bring patent infringement proceedings under the Patents Act.

Israel Small Flag Israel

Only a registered patent owner (including a patent co-owner) and a recorded exclusive licensee have standing under the Patents Act to bring a patent infringement action. However, courts may be inclined to allow also the parent company of the registered patentee to bring an action.

In addition, a court-appointed receiver or liquidator assumes the power of the patentee or the exclusive licensee to bring a patent infringement action.

Italy Small Flag Italy

Exclusive licensees have standing to bring a patent infringement action. Their standing concurs with the standing of the patentee.

Non-exclusive licensees have standing to file for patent infringement, however only as co-plaintiffs joining in alongside the patentee and/or the exclusive licensee.

Japan Small Flag Japan

Under the Patent Act, a patentee or registered exclusive licensee is eligible to file a patent lawsuit. Meanwhile, there are divergent opinions as to whether a non-registered exclusive licensee is eligible to represent the rights to file an injunction of the patentee. Many precedents have been developed in which a non-registered exclusive licensee was found to be eligible to file a claim for damages.

Norway Small Flag Norway

Owner: Proceedings for infringement of a patent may be instituted by the owner of the patent.

Exclusive Licensee: If the licensee has been granted an exclusive license, the licensee may instigate legal proceedings and claim compensation (damages, etc.) for the loss incurred as a consequence of the infringement. Exclusive licensees may also normally sue for infringement.

Non-exclusive Licensee: If the licensee on the contrary has not been granted an exclusive license, the licensee may not claim an injunction, but may sue for damages.

Poland Small Flag Poland

An action for infringement may be brought by the patent holder and/or an exclusive licencee disclosed in the patent register maintained by the Polish Patent Office and only provided that the licence agreement does not exclude the standing to bring claims. The exclusive licensee must prove his/her standing to sue by filing an excerpt from the register, and it is not obligatory to disclose the full exclusive licence agreement in the infringement proceedings.

Certain limitations for actions filed by the exclusive licensee may be considered in relation to the monetary claims as regards the relevant damage incurred as a result of the infringing acts. Specifically, the licensee should have a standing to sue only for damages which he/she incurred and not the entire damage occurred due to the infringement.

Claims relating to a patent infringement may be pursued in conjunction with claims stemming from other legal grounds, such as an act of unfair competition, if the plaintiff conducts its business activities concerning the infringed right on the territory of Poland.

Portugal Small Flag Portugal

VdA: Patent holders have legal standing. The licensees or sub-licensees also have standing to enforce a patent, alone or together with the patentee, since they enjoy all the powers of the patent holder except otherwise provided in the (sub-)licence agreement, which must be registered with INPI.

Russia Small Flag Russia

Patent infringement court action can be filed either by patentee or by an owner of exclusive license (such license is to be registered with the Russian Patent Office), unless the right to file the suit is withdrawn in said exclusive license.

Singapore Small Flag Singapore

A proprietor of a patent has standing to bring a patent infringement action. An equitable owner of a patent may also bring a patent infringement action although he must perfect his equitable title before final judgment.

Where there are multiple proprietors for a patent, any of them may bring an action without the consent of the other proprietors, but they must be named as defendants in the proceedings unless the Court orders otherwise.

An assignee or exclusive licensee of a patent also has standing to bring an action in respect of any infringement of the patent committed after the date of the assignment or license, or for infringements occurring prior to that date if such right is included in the relevant grant of title. The transaction, instrument or event by which the proprietor or exclusive licensee is conferred rights in a patent should be registered within a period of 6 months of its date, or if registration within that period is not practicable, as soon as practicable thereafter. The failure to do so would preclude the proprietor or licensee from obtaining damages or an account of profits in respect of a subsequent infringement of the patent occurring after the transaction, instrument or event but before the same was registered.

Licensees under a licence of right or a licence granted compulsorily may request for the proprietor of a patent to bring proceedings to prevent any infringement of the patent, and if the proprietor neglects to do so within 2 months, the licensee may institute proceedings in his own name, making the proprietor a defendant to such proceedings.

South Korea Small Flag South Korea

A patentee has standing to bring a patent infringement action. An exclusive licensee can also bring a patent infringement action independently from the patentee, provided that the exclusive license is registered with the KIPO.

Sweden Small Flag Sweden

An action may be brought by the patentee and licensees, both exclusive and non-exclusive. A licensee must inform the patentee of its intention to bring an action.

Switzerland Small Flag Switzerland

An infringement action can be brought by the patent holder or an exclusive licensee, unless the license agreement specifically excludes this right. The exclusive licensee does not need to be registered to have standing. By contrast, non-exclusive licensees have no right to sue for patent infringement. However, they may join an action for damages in order to claim their own damages.

Taiwan Small Flag Taiwan

A patentee and an exclusive licensee will have standing to bring a patent infringement action. A non-exclusive licensee will also have standing to bring a patent infringement action, provided that the non-exclusive licensee files the patent infringement action jointly with the patentee.

Thailand Small Flag Thailand

Only a patentee, or a transferee of a patent from the patentee, can file a patent infringement action in the Thai court. There is no legal basis or precedent which expressly allows a patent licensee (exclusive/non-exclusive) to bring an action.

Turkey Small Flag Turkey

According to the IP law, the patent owner is entitled to file infringement claims.

Unless otherwise agreed in the license agreement, the exclusive licensee is entitled to file an infringement action on behalf of him/herself.

For non-exclusive license agreements, by default, the licensee does not have direct rights to file an infringement action. The non-exclusive licensee can request the patent owner to file an action against a patent infringement, unless it is limited otherwise in the agreement. If the patent owner does not take the requested action within three months, the non-exclusive licensee can file the action him/herself.

United Kingdom Small Flag United Kingdom

In the UK, the parties with standing to bring patent infringement proceedings are patentees and exclusive licensees.

Owner

Section 61 Patents Act provides that, subject to certain conditions, a patentee may bring civil proceedings in a court in respect of any act alleged to infringe a patent.

Section 66 Patents Act concerns the standing of a co-owner of a patent to bring proceedings for infringement. Subsection (2) provides that one of two or more joint proprietors of a patent may, without the concurrence of the others, bring proceedings in respect of an act alleged to infringe the patent, but shall not do so unless the others are made parties to the proceedings. However, any of the others made a defendant shall not be liable for any costs or expenses unless they enter an appearance and take part in the proceedings.
Exclusive licensee

Section 67 Patents Act provides that the holder of an exclusive licence under a patent shall have the same right as the patentee to bring proceedings in respect of any infringement of the patent committed after the date of commencement of the licence.

Section 67(3) requires that in any proceedings taken by an exclusive licensee by virtue of the section, the patentee shall be made a party to the proceedings, but if made a defendant, shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings.

Under Section 130 Patents Act, an “exclusive licence” is defined as a licence from the patentee or applicant for a patent conferring on the licensee, or on them and persons authorised by them, to the exclusion of all other persons (including the patentee or applicant), any right in respect of the invention to which the patent or application relates. Under this definition, it is not necessary for a licence to confer all rights under a patent for that licence to be “exclusive”, but rather that any rights conferred must be conferred exclusively. Accordingly, not all patent licensees will necessarily be “exclusive licensees” under the Patents Act.

United States Small Flag United States

Two categories of rights holders may file a patent suit: the patent owner or the exclusive licensee. A patent owner is an entity owning all rights and title in a patent. An exclusive licensee is an entity that, while not receiving legal ownership of a patent, receives all substantial rights (e.g., the rights to enforce and collect damages). By contrast, a bare licensee (i.e., an entity merely holding the right to practice a patent) has no right to enforce the patent and cannot be joined as a co-plaintiff.

Vietnam Small Flag Vietnam

(i) Patent holder

Currently, a patent holder can sue for patent infringement.

(ii) Exclusive licensee

Unless prohibited by the patent holder, an exclusive licensee can commence patent infringement proceedings before the competent authorities. In principle, the licensee must be registered with the IP Office to be eligible to sue (Article 148.2, IP Law).

(iii) Non-exclusive licensee

A non-exclusive licensee can commence infringement proceedings provided that it has been registered with the IP Office (Article 23, Decree No. 105/2006/ND-CP).

(iv) Distributor

In both civil litigation and administrative action, a distributor can initiate patent infringement proceedings if it is authorised to do so by the patent holder.

(v) Other

In administrative actions, the patent holder can authorise external IP agents or the heads of their own representative offices, branches, or agents in Vietnam to pursue the action before the competent authorities (Article 23.1, Decree 99/2013/ND-CP).

Updated: November 4, 2019