Difference between revisions of "Assignor estoppel"
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The [[America Invents Act]] abrogated this doctrine for ''inter partes'' proceedings,<ref>https://www.patentspostgrant.com/equitable-defenses-ptab/?utm_source=Mondaq&utm_medium=syndication&utm_campaign=View-Original</ref> however, which further undermines the validity of patents like much of what the AIA has done. | The [[America Invents Act]] abrogated this doctrine for ''inter partes'' proceedings,<ref>https://www.patentspostgrant.com/equitable-defenses-ptab/?utm_source=Mondaq&utm_medium=syndication&utm_campaign=View-Original</ref> however, which further undermines the validity of patents like much of what the AIA has done. | ||
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| + | On January 8, 2021, the [[U.S. Supreme Court]] granted cert. in No. 20-440 to consider this question: | ||
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| + | {{cquote|QUESTION PRESENTED: | ||
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| + | In the Patent Act, Congress established that invalidity is a “defense[] in any action | ||
| + | involving the validity or infringement of a patent.” 35 U.S.C. § 282(b) (emphasis added). | ||
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| + | There is no textual exception to this command. The Federal Circuit nonetheless applies | ||
| + | a judge-made “equitable” exception to the statute’s unqualified language known as | ||
| + | “assignor estoppel.” Assignor estoppel prevents an inventor who has assigned a patent | ||
| + | from later contesting the patent’s validity. | ||
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| + | The question is whether a defendant in a patent infringement action who assigned | ||
| + | the patent, or is in privity with an assignor of the patent, may have a defense of invalidity | ||
| + | heard on the merits.}} | ||
== References == | == References == | ||
<references/> | <references/> | ||
[[category:Patent Law]] | [[category:Patent Law]] | ||
Revision as of 19:38, January 27, 2021
Assignor estoppel is the patent law doctrine that an assignor of a patent is estopped, or barred, from later contesting the validity of the patent. The logic behind this judge-made doctrine is that by assigning the patent, the patent-holder accepted its validity, and cannot contradict himself on that point later.
The America Invents Act abrogated this doctrine for inter partes proceedings,[1] however, which further undermines the validity of patents like much of what the AIA has done.
On January 8, 2021, the U.S. Supreme Court granted cert. in No. 20-440 to consider this question:
| “ | QUESTION PRESENTED:
In the Patent Act, Congress established that invalidity is a “defense[] in any action involving the validity or infringement of a patent.” 35 U.S.C. § 282(b) (emphasis added). There is no textual exception to this command. The Federal Circuit nonetheless applies a judge-made “equitable” exception to the statute’s unqualified language known as “assignor estoppel.” Assignor estoppel prevents an inventor who has assigned a patent from later contesting the patent’s validity. The question is whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits. |
” |