What is the impact of intervening rights on patent enforcement?
Intervening rights can significantly impact patent enforcement after a patent has been reinstated. According to MPEP § 2591, the patent holder’s ability to enforce their rights may be limited against certain parties who acted during the lapse period. The MPEP states:
“No patent, the term of which has been maintained as a result of the acceptance of a late payment of a maintenance fee, shall abridge or affect the right of any person or his or her successors in business who made, purchased, imported, or used after the 6-month grace period but prior to the acceptance of the late maintenance fee anything protected by the patent, to continue the use or importation of, or to sell to others to be used or sold, the specific things made, purchased, imported, or used.”
This means that:
- The patent holder cannot prevent continued use, importation, or sale of specific items made or used during the lapse period.
- The patent’s enforceability may be limited against those who took actions or made substantial preparations during the lapse.
- Courts may allow continued practice of processes or use of products related to the patent, based on equitable considerations.
As a result, patent holders must carefully consider the potential impact of intervening rights when seeking to enforce a reinstated patent.
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