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The (seemingly) ancient patent law principle of assignor estoppel represents the equitable concept that an inventor should not be able to assign rights and profit thereby to a patented invention and then argue that the patent is invalid (on any basis). Besides the inherent justice of this idea, on a practical level the inventor is likely to be a person most able to improve an invention. Under these circumstances, the possibility of shenanigans, in the form of retaining particularly beneficial embodiments of an invention conceived while under an obligation to assign (and hence that should pass with the assignment) was recognized by judges when forming this doctrine. However, as inventions have grown in complexity countervailing considerations (such as patent scope being expanded beyond what had been invented at the time of the assignment) have put into question the continued vitality of the doctrine.
Please join Kevin E. Noonan, Ph.D. and Joshua R. Rich of McDonnell Boehnen Hulbert & Berghoff LLP as they discuss:
- The nature of the estoppel (5 minutes)
- The statutory history, relevant prior decisions, and legal proceedings leading up to the Minerva Surgical decision (30 minutes)
- The Supreme Court’s holding in Minerva Surgical (10 minutes)
- The potential impact of the decision on the conduct of inventors and assignees (15 minutes)
Patent practitioners and academics, investment bankers and counsel will find this presentation informative.