Setting a new standard

Hebe Doneski and Jeffrey D Morton unpack the changes to patent assignor estoppel as a result of the recent Minerva Surgical decision

Hebe Doneski, 108 LegalJeffrey D Morton, Snell & Wilmer

Ensuring proper assignment of an inventor’s intellectual property rights is critical if a company seeks to build a valid and enforceable patent portfolio. In its recent decision in Minerva Surgical v Hologic, Inc, ¹ the Supreme Court of the US narrowed the longstanding equitable doctrine of patent assignor estoppel, which previously barred an inventor who has assigned a patent from claiming that it is invalid. This article discusses certain business practices that organisations may wish to revisit in light of the new, narrower standard enunciated in Minerva.