All Co-Owners Must Consent To Join Suit For Any Co-Owner To Have Standing: Must join all legal-title co-owners of the patent as plaintiffs. Waterman (U.S. 02/02/1891); Advanced Video II (Fed. Cir. 01/11/18) (2-1) (aff’g dismissal of complaint for lack of standing because co-owner not a party); Israel Bio-Engineering (Fed. Cir. 01/29/07) (“a co-owner acting alone will lack standing”). Typically co-owner can resist such joinder notwithstanding FRCP 19(a), unless has granted exclusive license to the plaintiff or has waived right not to join. UNM (Fed. Cir. 06/06/14) (2-1) (“the right of a patent co-owner to impede an infringement suit brought by another co-owner is a substantive right that trumps the procedural rule for involuntary joinder under Rule 19(a)”; aff’g lack of standing), rehearing en banc denied (6-4) (Fed. Cir. 09/17/14). Each co-owner (legal title) of a patent must consent to join a suit enforcing the patent. DDB Tech. (Fed. Cir. 02/13/08) (exceptions to rule that a co-owner cannot be involuntarily joined are (1) an exclusive licensee may join the patent owner as an involuntary plaintiff in an infringement suit, and (2) a co-owner who, by agreement, waives his right to refuse to join suit, may be forced to join an infringement suit); Ethicon (Fed. Cir. 02/03/98) (dismissing suit where co-owner refused to join); Schering (Fed. Cir. 01/08/97) (“‘one co-owner has the right to impede the other co-owner’s ability to sue infringers by refusing to voluntarily join in such a suit.’”)
Note: Rule that co-owners cannot be joined by Rule 19(a) may be susceptible to challenge as patent exceptionalism. SeeAdvanced Video II (Fed. Cir. 01/11/18) (2-1) (O’Malley, J., concurring op.) (long discussion of why court’s precedents are wrong).
Co-Owner Can Grant License Under Patent Without Consent Of Or Recourse By Other Owner: “Each co-owner of a United States patent is ordinarily free to make, use, offer to sell, and sell the patented invention without regard to the wishes of any other co-owner. Each co-owner’s ownership rights carry with them the right to license others, a right that also does not require the consent of any other co-owner.” Schering (Fed. Cir. 01/08/97) (but, absent agreement to the contrary, a co-owner cannot grant a release of another co-owner’s right to accrued damages). Look for possible co-owners and try to bargain with them for a covenant not to sue.