Licensee estoppel is a doctrine under which a licensee of an
intellectual property
Intellectual property (IP) is a category of property that includes intangible creations of the human intellect. There are many types of intellectual property, and some countries recognize more than others. The best-known types are patents, co ...
right, generally a
patent
A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A ...
or a
trademark
A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from ot ...
, is
estopped
Estoppel is a judicial device in common law legal systems whereby a court may prevent or "estop" a person from making assertions or from going back on his or her word; the person being sanctioned is "estopped". Estoppel may prevent someone from ...
from challenging the validity of the licensed property. The basis for the doctrine is the premise that a licensee should not be able to enjoy the benefit of an agreement and at the same time attack the validity of the intellectual property that forms the basis of the agreement.
United States
In
United States patent law
Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited ...
, the doctrine has been overturned. In 1969, the
U.S. Supreme Court, in ''
Lear v. Adkins'',
held the doctrine inconsistent with a federal policy that the invalidity of specious patents should be unmasked in order to permit full and free competition in technology ideas that belong in the public domain. The strong public interest in invalidating patents, allowing public access to non-patentworthy technology, justified permitting licensees to challenge patents.
[
In the United States, the doctrine remains valid in ]trademark law
A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from othe ...
, where the public policy concerns differ from the patent context.trade secret
Trade secrets are a type of intellectual property that includes formulas, practices, processes, designs, instruments, patterns, or compilations of information that have inherent economic value because they are not generally known or readily ...
licenses.copyright
A copyright is a type of intellectual property that gives its owner the exclusive right to copy, distribute, adapt, display, and perform a creative work, usually for a limited time. The creative work may be in a literary, artistic, educatio ...
context.
See also
* Assignor estoppel
The doctrine of assignor estoppel is a doctrine of United States patent law barring a patent's seller (assignor) from attacking the patent's validity in subsequent patent infringement litigation. The doctrine is based on the doctrine of legal est ...
References
{{US-law-stub
United States patent law
United States trademark law
Estoppel