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Joseph A. Farco
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Joseph A. Farco
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Challenging the Validity of a Patent: The Supreme Court Minerva Decision

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The Supreme Court of the United States recently held in the case of Minerva Surgical, Incorporated v. Hologic, Incorporated that the doctrine of assignor estoppel (a rule that prevents people who assign their patents to a company from then challenging the validity of their patent) is alive and well, but subject to certain important exceptions.

The Validity of a Patent

In the Minerva case, the Supreme Court required the lower court to explain whether the inventor’s promise not to challenge the validity of a first patent at the time of the assignment could be held against the inventor when challenging a later patent with claims that were broader than the ones involved in the patent assigned.

The decision saw the Supreme Court apply a “non-contradiction” rule to assignor estoppel issues, which requires one to determine whether the inventor truly gave up the ability to challenge the validity of the patent in question in the assignment document. This rule will be the one to follow for all future assignor estoppel cases.

Implications for Inventors and Businesses

The Minerva decision has important implications for inventors and businesses alike. Some key take-aways are as follows:

  1. What role does claim construction play in the scope of any purported validity representation or estoppel?
  2. What impact does a broadening reissue or narrowing reexamination/reissue have on the scope of estoppel?
  3. Must a new assignment be submitted for continuation-in-part patent applications whose claims encompass subject matter that was not present in the applications previously assigned?

Contact Norris McLaughlin about Patent Protections

When in doubt over whether your assignment documents provide your patent with sufficient protections and privileges, be sure to contact one of the intellectual property lawyers at Norris McLaughlin, P.A., to get an experienced hand to help you in the process. If you have questions about this blog post or any related matters, please feel free to contact me at jfarco@norris-law.com.

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Joseph A. Farco
Member
Joseph A. Farco
Visit Profile
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