Entitlement to Sue: The Rights of Non-exclusive Licensees in Patent Infringement Proceedings

Following the Full Federal Court's decisions in Actavis Pty Ltd v Orion Corp and Bristol-Myers Squibb Co v Apotex Pty Ltd, s 120(1) of the Patents Act 1990 (Cth) is widely understood as precluding non-exclusive licensees from becoming a party to infringement proceedings. This article contends that, as s 120(1) refers to the "start" of proceedings, rather than "standing"(or an analogous term), it should be interpreted as only restricting the parties that can commence infringement proceedings. It is argued that this provision does not prevent non-exclusive licensees (and other appropriately interested parties) from being joined as a plaintiff to infringement proceedings that are already on foot. In addition to overcoming the well-known practical difficulties introduced by Actavis and BMS, this interpretation better reflects the language and policy objectives of s 120(1) and the Patents Act more broadly, as well as the Federal Court Rules 2011 (Cth) and other intellectual property legislation enacted by the Commonwealth.