Industry Commenters Say Minerva Ruling is a Win for Employee Mobility

Director William H. Milliken was quoted in the article “Industry Commenters Say Minerva Ruling is a Win for Employee Mobility,” published by IPWatchdog. Will provided the following commentary on the US Supreme Court’s decision in Minerva Surgical, Inc. v. Hologic, Inc. that was issued on June 29, 2021:

“The primary takeaway from the decision is that, going forward, assignor estoppel will apply in relatively narrow circumstances. It will prevent a patentee from assigning a patent and then later arguing that the same patent is invalid. But it will not—to take one common example—prevent an employee who agrees as a condition of employment to automatically assign all patent rights in future inventions from later contesting the validity of one of those patents, because the employee cannot make a representation about an invention that does not yet exist. And, for similar reasons, it will not prevent the assignor of a patent application from contending that a later claim issuing from that application (or a related application) is invalid under section 112 because it lacks written-description support in the original application.”