Fix Twitter's Standing to Sue

[jorgemtorres]

Under U.S. law, a party that wants to sue for patent infringement in its own name needs to own all substantial rights in the asserted patent. The current version of the IPA arguably fails to convey to Twitter all substantial rights in the assigned patents because it does not convey the right to sue non-defensively (a substantial right).

What this means in practical terms is that in order to sue (for a defensive or non-defensive purpose), Twitter will have to join one or more inventors as participants in any lawsuit that it files under the assigned patents. The current version of the IPA, especially Section 3, does not explicitly require inventors to take all steps necessary to effect his or her participation in suits that Twitter can pursue without the inventor's consent pursuant to Section 2. If Section 3 is interpreted in a manner that does not obligate the inventor to participate in lawsuits Twitter files for a Defensive Purpose, then Twitter will need to secure the inventor's participation at the time the lawsuit is filed. Otherwise, Twitter's suit will be dismissed for lack of standing.

To fix this, consider adding language to Section 3 that says that the inventor agrees, when requested and without further consideration, to take all steps necessary to effect his or her joinder as a party to any lawsuit brought by Twitter for a Defensive Purpose as set forth in Section 2, or two otherwise cure any defect in standing that may arise in a lawsuit brought for a Defensive Purpose. With this language in place, a court is likely to add the inventor as party to a lawsuit brought for a defensive purpose, even if the inventor, after signing the IPA, does not agree to participate in the lawsuit.

[benltwitter]

Open to suggested language in a commit to paragraph 3 (without commenting on the standing issue ;) ).