Distributing patent rights among affiliates: guidelines to support enforcement rights around the world

In the US, a non-exclusive licensee cannot sue for patent infringement damages. It cannot even join in the litigation with the patent owner. Thus, in the US, if Affiliate is a non-exclusive licensee, it could not be part of the litigation or seek lost profits. Parent also faces the risk that it may be unable to recoup the lost sales that Affiliate suffered as a result of patent infringement. Other countries adopt a similar approach to non-exclusive licensees. The UK, Australia, and Japan do not permit a non-exclusive licensee to join suit or to collect damages. However a number of countries may permit a non-exclusive licensee affiliate to participate in the litigation and collect damages. These countries include Canada, Italy, France, Germany, Spain, the Netherlands, and China. Some countries require the patent owner to specifically authorize the non-exclusive licensee to join, for example, by providing the authorization in the license agreement.