Locke Lord's Intellectual Property Department Chair Alan Clement Quoted in Law360 on Impact of SCOTUS' Minerva Ruling on Assigned Applications and Possibility of Future Litigation

June 29, 2021

New York Partner Alan Clement, Chair of Locke Lord’s Intellectual Property Department, was quoted by Law360 on the impact of the U.S. Supreme Court’s decision in Minerva Surgical Inc. v. Hologic Inc., providing insight on the Court's decision narrowing, but not eliminating, a doctrine that prevents assignors of patents from challenging the validity of the assigned patents. The justices outlined scenarios in which the doctrine doesn't apply, including when the patent at issue is different from what the inventor originally assigned. The court held that when the claims at issue are "materially broader" than what was assigned, the inventor can challenge them, the court held. Clement said that approach "is logical because what is claimed in an assigned application can change relatively substantially from what was claimed at the time of the assignment.”

Clement further noted, "However, this approach will likely result in future litigation to determine what the assignor represented was being assigned at the time of the assignment.”

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