How do courts determine the extent of intervening rights?
Courts have discretion in determining the extent of intervening rights granted in cases involving reinstated patents. According to MPEP § 2591, courts consider several factors:
- The nature and extent of activities during the lapse period
- Investments made or business commenced during this time
- Equitable considerations for protecting these investments
The MPEP states:
“A court before which such matter is in question may provide for the continued manufacture, use, importation, or sale of the thing made, purchased, imported, or used as specified, or for the manufacture, use, importation, or sale of which substantial preparation was made after the 6-month grace period but before the acceptance of the late maintenance fee, and it may also provide for the continued practice of any process, practiced, or for the practice of which substantial preparation was made, after the 6-month grace period but prior to the acceptance of the late maintenance fee, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced after the 6-month grace period but before the acceptance of the late maintenance fee.”
This means that courts have the authority to tailor the scope of intervening rights based on the specific circumstances of each case, balancing the interests of the patent holder and those who acted during the lapse period.
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