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McKool Smith principal Nick Matich spoke with Life Sciences IP review on his views towards the US Supreme Court opinion in Minverva v Hologic, which means inventors now have a “far narrower scope” to challenge the validity of their own patents in defense proceedings. Nick said, “Those looking to take advantage of assignor estoppel in the future might do well to focus on particular representations an inventor or assignor made… Justice Kagan suggests that such agreements wouldn’t trigger assignor estoppel, because when the agreement is signed ‘the invention itself has not come into being’. When an employee is onboarded, there is no invention. But that is only half of the story. If the inventor later ends up working with prosecution counsel and signing the inventor’s oath, then the inventor may end up making the kinds of representations to her employer and the patent office that would make it inequitable for her to repudiate the patents later.” Read the article here.

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