ASSIGNORESTOPPEL：FAIRNESSATWHATPRICE.doc

Copyright (c) 2004 School of Law, Santa Clara UniversitySanta Clara Computer and High Technology Law Journal March, 2004 20 Santa Clara Computer High Tech. L.J. 797 LENGTH: 17039 wordsHIGH TECH LAW INSTITUTE PUBLICATION:?ASSIGNOR ESTOPPEL: FAIRNESS AT WHAT PRICE?NAME: Lara J. Hodgson+BIO: ?+ B.A., University of California, San Diego; J.D. and LL.M., Santa Clara University School of Law; Associate at Mount Stoelker. I would like to thank my family and friends for their continued encouragement and support.SUMMARY:... How far does that sense of fairness extend? Should it take precedence over other public policy concerns which have helped to shape our laws and justice system? These questions have plagued the courts in the context of patent law and assignment agreements. ... The doctrine of assignor estoppel, simply stated, precludes a patent assignor from attacking the validity of the assigned patent as a defense to a charge of infringement. ... In the case of assignor estoppel, the Supreme Court recognized that concerns such as the patent law policies took precedence, and therefore justified severely curtailing the doctrine. ... Significantly, the court also found application of assignor estoppel appropriate as the alleged basis for invalidity - the failure to identify all inventors - was one which was known to Shorty at the time it reassigned the patent to Simon. ... As of 1970, after the Supreme Court decided Lear, it appeared that the doctrine of assignor estoppel had only a strictly limited application, if any. ... The courts take on assignor estoppel in effect turns a simple assignment agreement into an absolute, and effective, warranty as to the validity of not only the patent, but the inventors rights in his invention, whether claimed or not. ... ?TEXT:?[*799]?I. Introduction?It has been well ingrained in all of us that what is fair is generally right, and what is unfair is wrong. We are all familiar with the notion that we cannot have ou