Posts Tagged: "patent assignment"

The USPTO’s Increased Automation of Patent Assignments is Good for the Patent System

After a patent application is filed with the USPTO, it gets assigned to an art unit and a patent examiner in that art unit who is responsible for reviewing the application, doing a prior art search, and determining whether to grant a patent…. In the past, this process was manual. People would review patent applications to assign classification codes, and then other people would determine the art unit and examiner to be assigned using the classification codes. More recently, the USPTO is automating the assignment process. The assignment process is a great candidate for automation using machine learning, because large amounts of training data are available to train a machine learning model. Automating the assignment process has several advantages: lower costs, faster processing, and more consistent and likely better assignments of applications to art units and examiners.

Practical Considerations for Patent Assignments After the Supreme Court’s Decision in Minerva Surgical v. Hologic

On June 29, 2021, the Supreme Court issued its long-awaited decision in Minerva Surgical, Inc. v. Hologic, Inc. in which it clarified the proper limits of the centuries-old doctrine of assignor estoppel, which operates to prevent an inventor who assigns a patent to another for value from later claiming that the patent assigned is invalid during litigation, holding that the doctrine only applies when “the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” The decision underscores the need to keep in mind a number of factors when preparing and executing patent assignments.