How does the “intervening rights” doctrine affect patent reissue recapture?
How does the “intervening rights” doctrine affect patent reissue recapture?
The “intervening rights” doctrine is an important consideration in patent reissue cases, including those involving recapture. While not directly part of the recapture analysis, it can affect the enforceability of reissued patent claims.
According to MPEP 1460, intervening rights are provided for in 35 U.S.C. 252:
“The statute provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
- Absolute intervening rights: Protect those who made, purchased, or used anything patented by the reissued patent prior to the reissue
- Equitable intervening rights: May be granted by courts to protect substantial preparations for infringing activities made before the reissue
In the context of recapture, if a reissue broadens the claims in a way that recaptures previously surrendered subject matter, and this broadening affects third parties who have relied on the original patent claims, the doctrine of intervening rights may limit the patent owner’s ability to enforce the broadened claims against those parties.
Patent applicants considering a broadening reissue should be aware of the potential impact of intervening rights on the enforceability of their reissued claims, especially in cases involving recapture.
To learn more: