Assignor Estoppel And Patent Invalidity

Where You Need a Lawyer:

(This may not be the same place you live)

At No Cost! 

 What Is a Patent?

Inventors want to protect their inventions from unauthorized use and distribution. Patents are granted to inventors to prevent others from “making, using, offering for sale or selling the invention” within the United States. Therefore, a patent protects an inventor’s invention.

Patents last for twenty years and can cover any invention in any technology field. Per international agreements with the World Trade Organization (WTO), member nations are expected to recognize and enforce legal patents.

Types of Inventions that Can Be Patented

Generally, to receive a patent from the U.S. Patent and Trademark Office, the invention must be new, unique, and generally unobvious.

Depending on the item you wish to patent, there are different types of patents available:

  • Utility Patent: Generally, the invention must be a process or method with a concrete result, the machine, chemical or biological composition of matter, or an invention improvement. The invention must also be moderately useful to qualify for a utility patent.
  • Design Patent: Generally, the design must be novel, non-obvious, and non-functional.
  • Plant Patent: Plants that you create can be patented. The plant must be novel and non-obvious. Naturally occurring substances, laws of nature, ideas, and calculation methods, among other things, cannot be patented.

What Is Assignor Estoppel?

Assignor estoppel is the doctrine that prevents an inventor from challenging the validity of a patent after he assigns the patent rights to someone else. Patent law generally supports assignor estoppel rather than licensee estoppel.

Why Would I Want to Challenge the Patent’s Validity on My Invention?

If you assign your rights to a patent and then later decide to manufacture and sell the invention, you will infringe on the patent rights.

Why Is It So Bad to Challenge the Validity of My Patent?

If you challenge the validity of a patent after assigning it to someone, you probably made some financial gain from the assignment. In patent law, you’re prohibited from selling rights to your patent and then declaring those rights worthless once you’ve made a profit. In the absence of assignor estoppel, an inventor could sell their patent rights, have the patent declared invalid, and then manufacture and sell the invention whose patent rights they sold.

Are There any Exceptions to Assignor Estoppel?

The doctrine of assignor estoppel is pretty rigidly applied. An assignor may challenge the patent’s validity on their own invention under certain circumstances.

It is common for an invention to be disclosed in a prior patent. In the case of an earlier patent that disclosed the invention, the need to avoid extending patent protection outweighs the need to prevent assignors from abusing their patents.

How Can I Avoid Having to Deal with Assignor Estoppel?

Whenever you make an assignment, be careful because most of the time, it will be difficult to regain your patent rights if you make an assignment.

  • Make sure you are getting adequate compensation for your invention when you make the assignment
  • Limit the duration of the assignment if possible

How Can I Get a Patent for My Invention?

The U.S. Patent and Trademark Office receives patent applications and makes patent determinations. An inventor must submit an application to the Patent and Trademark Office and attach specific drawings and a plan of the proposed invention. It is also necessary for the inventor to include a fee.

The invention plan must follow a very rigid and specific format. After the application is reviewed, the Patent and Trademark Office will usually question the applicant regarding any objections the office may have.

As of September 2011, the patent will be owned exclusively by the inventor who filed the patent first. In the past, patents were granted to those who first invented a technology or product.

Can I Transfer My Patent To A Family Member or Business Partner?

Yes. Although Congress has the power to grant exclusive rights to inventors, the current federal code allows patents to be sold, licensed, mortgaged, transferred, or abandoned as any other property.

What Can Be Patented?

As well as the general subject matter that can be patented, patent law specifies the conditions for obtaining a patent.
The statute says that anyone who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.”

According to the law, a process includes industrial and technical processes. There is no need to explain the term “machine” used in the statute.

The term “manufacture” refers to all articles that are made.

“Composition of matter” refers to chemical compositions, including mixtures of ingredients and new compounds.

Human-made objects and the processes involved in making them are included in these categories.

Trademark or Brand?

In essence, a brand is how people perceive your product or service. Certain elements are associated with different brands, such as reputation, image, and emotion. Using a certain brand might make you feel confident, calm, or secure.

However, federal trademark registration can provide your brand with nationwide legal protection. You can protect your brand through trademark law. Business owners often protect their brand names for their main or dominant products or services. In addition, you can protect slogans and logos for those goods and services.

You decide what and how much you want to protect.

A brand can exist without being registered as a trademark. Even so, if you don’t register your brand as a trademark, anyone can misuse it or create a brand similar to yours that people can’t tell the difference. Therefore, consumers may purchase someone else’s products or services by mistake, even if they trust your brand’s reputation.

Patent Infringement

Patent infringement can occur if another party uses your invention or an invention with elements similar to yours. A patent infringement must be demonstrated by comparing the patent’s claims and elements with those of the suspect device or invention. Infringement occurs if they match.

Patents can be enforced in federal court by inventors.

If Someone Else Invents the Same Invention as Me, Who Has Priority?

Priority is determined by who invented it first. In the case of a dispute between two inventors over priority, the first inventor to make and test their invention or to file for a patent will have priority unless:

  • They abandoned, suppressed, or concealed his invention by delaying for an unreasonable time; or
  • The other inventor conceived of the invention first and worked with reasonable diligence to make and patent it.

If Someone Gives Me Ideas for an Invention, Can I Still Get a Patent?

It depends. Not every suggestion or idea you receive will bar you from getting a patent.

A person can only bar you from making an invention if they suggest it and tell you how to make it. If someone freely discloses an idea without intending to file for a patent, you cannot patent it. An invention can only be patented by its inventor.

Do I Need a Patent Attorney?

If you are an assignor or an assignee of patent rights and have questions or concerns regarding your rights, you may want to consult with a patent lawyer. A patent attorney can explain how assignor estoppel may affect you and can represent you in court regarding your issues, if necessary.

Law Library Disclaimer


16 people have successfully posted their cases

Find a Lawyer