以美國法之全部實質權利原則為借鏡檢視我國專利專屬授權法制

From the Rule of All Substantial Rights in the U.S. to Review the Exclusive License System in Taiwanese Patent Law

It’s a well-accepted concept that the exclusive patent licensees have the standing to sue for patent infringement independently without joining the patentees. However, the recent academic and prudential opinions in the U.S. stated that an exclusive licensee lacks standing to bring suit if the licensing agreement does not transfer the patent’s all substantial rights. In this study, it is argued that the said opinions in the U.S. can be explained by the “act of disposition” of the exclusive agreement and yet it is difficult to identify what all substantial rights are. An empirical study on the recent judgments of U.S Supreme Court and Federal Circuit is therefore conducted, finding that while the standing issue derived from patent transactions was considered case by case, no general rule was established by the courts. On the ground of the empirical study, the necessary and prohibitive provisions of the patent exclusive agreements to ensure the transfer of all substantial rights are analyzed and concluded. In addition, the recent academic and prudential opinions in the U.S. are also applied to review the Taiwan’s Patent Law, revealing that its provisions relating to patent exclusive license are not complete and precise enough. After conducting a comparative study, two aspects of a patent law amendment are proposed as follows: (1) the patent exclusive license should be well-defined in the Patent Law, including the necessary and prohibitive provisions of the patent exclusive agreements to ensure the transfer of all substantial rights; and (2) the patentee should have no more standing to sue for infringement independently if the exclusive licensee has obtained the standing to sue independently. The patentee, however, could still bring sue by joining the exclusive licensee.