Intellectual Property Law
New Matter SUMMER 2021, Volume 46, Number 2
Content
- 2021 New Matter Author Submission Guidelines
- A Look at the Trademark Modernization Act: Early Observations of a Bold New Law
- Cla Staff
- Claiming Priority in the Epo
- Contents
- Copyright News
- Editorial Board
- Enablement of Prior Art Under 35 U.S.C. § 103
- "Failure To Function" When that Catchy Slogan You ♥ is Not a Mark At All
- Intellectual Property Section Executive Committee 2019-2021
- Intellectual Property Section Interest Group Representatives 2019-2021
- Ip and Art: An International Perspective
- Letter from the Chair
- Letter from the Editor-in-Chief
- McLe Self-Study Article
- Ninth Circuit Report
- Online Cle For Participatory Credit
- Quarterly International Ip Law Update
- Recognizing California's Notable Dtsa Cases in Honor of Dtsa's 5th Birthday
- The California Lawyers Association Intellectual Property Alumni
- The Licensing Corner
- Trade Secret Report
- Ttab Decisions and Developments
- Federal Circuit Report
Federal Circuit Report
Rex Hwang
Skiermont Derby LLP
WILL THE DOCTRINE OF ASSIGNOR ESTOPPEL SURVIVE SCRUTINY FROM THE SUPREME COURT?
The doctrine of assignor estoppel is an equitable, judge-made doctrine that prevents a party who assigned a patent to another from later challenging the validity of the assigned patent. The longstanding reasoning behind the doctrine is that "an assignor should not be permitted to sell something and later to assert that what was sold is worthless, all to the detriment of the assignee."1 "In other words, it is the implicit representation by the assignor that the patent rights that he is assigning (presumably for value) are not worthless that sets the assignor apart from the rest of the world and can deprive him of the ability to challenge later the validity of the patent. To allow the assignor to make that representation at the time of the assignment (to his advantage) and later to repudiate it (again to his advantage) could work an injustice against the assignee."2