In the Q&A “Assignor Estoppel: Protecting Your Patent Rights” published in MedTech Intelligence, Knobbe Martens partner Mauricio Uribe discusses the doctrine of assignor estoppel, which is intended to prevent an inventor from challenging a patent’s validity after it has sold or “assigned” the patent. In the Q&A, Uribe discusses what medical device inventors and acquiring companies can do to ensure compliance with the Supreme Court and Federal Circuit’s assignor estoppel clarification.
Uribe discusses cases used as precedent that set the principles of when assignor estoppel applies or doesn’t apply. He discusses a recent such case, Minerva v. Hologic, where the Supreme Court recognized the validity of the principle of assignor estoppel, while instructing the Federal Circuit to clarify its applicability and provided three examples of “non-contradiction” situations in which the doctrine of assignor estoppel should not apply.
Uribe discusses the three areas in which assignor estoppel may not apply and comments on how the ruling changed patent agreements. He said, “You always want to get your assignment upon completion of filing the patent application…The other thing you want to consider, and this is going to be a strategy, is going for a very broad claim when you first file a patent application, and then narrowing it.” Uribe goes on to explain the pros and cons of this strategy and ways a company acquiring a patent can protect itself against potential assignor infringement.
Read the full article here.
