SCOTUS Upholds ‘Century-Old’ Assignor Estoppel Doctrine

Director William H. Milliken was quoted in the article “SCOTUS Upholds ‘Century-Old’ Assignor Estoppel Doctrine,” published by Intellectual Property Magazine. He commented on the US Supreme Court’s decision in Minerva Surgical, Inc. v. Hologic, Inc. that was issued on June 29, 2021. From the article:

“Sterne, Kessler, Goldstein & Fox’s William H Milliken said, ‘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.’

He added, ‘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.'”