← Back to Who Owns It, and Who Invented It?

Minerva v. Hologic: When Founders Can Fight Back

Supreme Court, decided 29 June 2021. Read from the opinion; quotations verified against the court's text.

Holding

On June 29, 2021 the Supreme Court declined to abolish assignor estoppel but held that it applies only when an inventor's invalidity argument contradicts an explicit or implicit representation made in assigning the patent, and identified three situations where no contradiction exists, including the ordinary employment agreement in which an employee assigns rights in inventions that do not yet exist.

An inventor assigned his patent application, left, founded a competitor, and was sued on the patent. The old rule said he could not argue the patent was invalid, because he had sold it.

The Supreme Court kept that rule but tied it to its reason: what makes the conduct unfair is contradiction, so the rule reaches only as far as what the inventor actually represented.

The Court then described three situations involving no contradiction. The first is the standard employment agreement, where an employee assigns rights in future inventions, and in the Court's words the assignment "contains no representation that a patent is valid. How could it? The invention itself has not come into being."

What This Case Is Not

The employment example is a description, not an adjudication. It is the most quotable passage here and the most dangerous, because a reader will hear "my old IP agreement does not bind me." The Court described a scenario. It did not rule on anyone's actual agreement, and whether a particular one carries a representation is a question about that document.
  • It does not free anyone from their employment agreement.
  • It did not abolish assignor estoppel. It tied the rule to its rationale.
  • Whether your invalidity argument contradicts something you represented is a legal question about your facts.

Educational, not legal advice. Consult a qualified patent attorney about your own timing, disclosure and claims.

Sources