By Jake Winslett

In Drone Technologies, Inc. v. Parrot S.A., the Federal Circuit held that courts need not conduct a substantive examination of patent inventorship to decide standing issues in infringement cases where the plaintiff’s claim to title is not otherwise in dispute. The court stated that “while ownership and inventorship are related concepts, they involve separate inquiries.” But, it failed to recognize the importance of determining inventorship to confirm that the plaintiff has standing to sue. To have standing under Article III of the Constitution, a plaintiff must show they have suffered an “injury in fact,” which, in infringement cases, is “when a party infringes a patent in violation of a party’s exclusionary rights.”

However, the court ignored how the standing rule applies in infringement suits brought by a patent assignee. In such suits, examining whether the patent rights passed from the sole inventor to the assignee should be a preliminary issue that the court decides as it determines whether the assignee possesses an “exclusionary right.” If the patent rights did not pass from the sole inventor, the assignee has no exclusionary right and thus would have an injury in fact necessary to establish standing.

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Recommended Citation
Jake Winslett, Presuming Patent Inventorship Without Further Examination: A Double-Edged Sword for Aerospace Companies, 83 J. Air L. & Com. 181 (2018)