What Are Intervening Rights?

Intervening rights is a defense to patent infringement. Essentially, they come into play when a patent owner allows a patent or patent application to expire or become abandoned but later revives it. From the period of expiration or abandonment to revival (i.e., the intervening period), the patent appeared unenforceable, and the public may have relied on the lapse to start a business or make investments. Because it would be unfair to stop the infringer after this point, the doctrine of intervening rights allows the infringer to continue those activities without patent infringement liability.

Before you allow a patent to expire or a patent application to go abandoned, thinking that you can always revive it later, I generally recommend don’t recommend it because of intervening rights.

Understanding Statutory, Equitable, and Absolute Rights

• Statutory Intervening Rights: Statutory intervening rights are specifically provided for under U.S. law in 35 U.S.C. §§ 252 and 307(b). These rights apply when patents undergo reissue (§ 252) or reexamination (§ 307(b)). Statutory intervening rights establish guidelines for protecting third-party reliance on the original claims when claims are later amended.
• Equitable Intervening Rights: Equitable intervening rights are based on fairness and are typically applied by courts. These rights allow third parties to continue using or selling products that they developed or invested in, relying on the public status of a patent or application. Courts consider factors like the level of reliance, the nature of the third party’s investments, and whether it would be unjust to require the third party to cease activities.
• Absolute Intervening Rights: Absolute intervening rights apply automatically, without the need for court intervention. These rights shield third parties from liability for activities completed before the patent status changed, such as manufacturing or selling products that would later infringe the modified or revived patent. Absolute rights apply strictly to past activities, protecting third parties from retroactive liability for actions taken before the patent’s reissue, reexamination, or revival.

Situations Where Intervening Rights Apply

Intervening rights typically apply in a few specific scenarios:

1. Failure to Pay Maintenance Fees but Is Paid Revived (Judge-Made, Equitable and Absolute Rights)

• What Happens: In the U.S., patents require maintenance fees to be paid at regular intervals to remain enforceable. If the patent owner doesn’t pay these fees on time, the patent lapses, effectively entering the public domain and allowing anyone to use the invention freely.
• Public’s Reliance: During the lapse, third parties may look up the patent, see it as expired, and start using or investing in the technology, believing it’s free to use.
• Intervening Rights: If the patent owner later revives the patent (by paying the overdue fees within a certain period), judge-made intervening rights may protect these third parties from liability for infringing the revived patent. They may continue their activities without penalty, as it would be unfair to disrupt investments made based on the patent’s apparent lapse.

2. Abandoned Patent Application (Often Published), Later Revived (Judge-Made, Equitable Rights)

• What Happens: Sometimes, a patent application is abandoned because the applicant didn’t respond to an office action or meet a deadline. If the application was already published as a pre-grant publication, the public can see that the application is abandoned.
• Public’s Reliance: Third parties may find the published application in an abandoned status and assume it won’t result in an enforceable patent. Relying on this, they might begin making or using the invention or incorporating aspects of it into their products or services.
• Intervening Rights: If the patent application is later revived, judge-made equitable intervening rights could protect these parties from infringement liability. The law recognizes that it would be unfair to disrupt third parties’ investments made based on the belief that the application had been abandoned.

3. Reexamination of Patent Claims (Statutory, Equitable and Absolute Rights under 35 U.S.C. § 307(b))

• What Happens: During reexamination, a patent’s claims are reviewed and may be amended or narrowed to clarify scope or overcome prior art. This process can result in modified claims with a narrower scope.
• Public’s Reliance: Third parties may have looked at the original claims and determined they were free to operate outside those boundaries. If the claims change through reexamination, those relying on the original claim scope could be unfairly impacted by the modified claims.
• Intervening Rights: Intervening rights under 35 U.S.C. § 307(b) protect third parties from liability for activities completed or investments made before the reexamination if they were based on the original claims. They might also extend to ongoing activities, allowing third parties to continue with the reasonable assumptions they made about the original claims.

4. Reissue of a Patent with Amended Claims (Statutory, Equitable and Absolute Rights under 35 U.S.C. § 252)

• What Happens: A reissue patent is granted to correct an error in the original patent, often involving changes to the scope of claims. For example, the claims might be narrowed to cover specific features of the invention, which could bring certain third-party activities within the patent’s new scope.
• Public’s Reliance: If third parties reviewed the original patent and believed their activities fell outside its scope, they might have invested in or used the technology accordingly.
• Intervening Rights: Intervening rights under 35 U.S.C. § 252 protect these parties from infringement claims based on the newly defined claims in the reissued patent. They ensure that third parties are not unfairly penalized if they relied on the original claims to make investments or conduct business.

5. Post-Grant Review (Judge-Made, Equitable Rights)

• What Happens: During post-grant review, a patent’s claims may be reviewed and amended, either by the USPTO or through judicial proceedings, to address issues such as validity based on newly discovered prior art.
• Public’s Reliance: Third parties may have reviewed the original claims and made significant investments based on their belief that they were free to operate outside the scope of those claims. If the claims are altered, these investments may be at risk.
• Intervening Rights: Although statutes don’t directly address intervening rights for post-grant reviews, courts have applied intervening rights principles in these cases to ensure fairness. Intervening rights allow third parties to continue their activities if they reasonably relied on the original claims when making investments.

6. Inter Partes Review (Judge-Made, Equitable Rights)

• What Happens: In inter partes review, a third party challenges the validity of a patent’s claims, often resulting in amendments to clarify or narrow the claims.
• Public’s Reliance: If third parties reviewed the original claims and determined that their activities fell outside the patent’s scope, they may have engaged in business operations or made investments accordingly.
• Intervening Rights: Judge-made equitable rights protect these third parties from unfair disruption. Even though statutes don’t specifically mention intervening rights for inter partes reviews, courts have recognized the fairness in applying them, allowing third parties to avoid infringement liability when they relied on the original claims.

Why Intervening Rights Matter

Intervening rights provide essential protections that prevent patent owners from enforcing their patents in ways that would unfairly harm third parties who relied on the patent’s public record. They ensure that if the public reasonably believed a patent was unenforceable or limited in scope, those who acted based on that understanding aren’t suddenly penalized when the patent status changes. This balance upholds both the rights of patent holders and fairness for third parties, maintaining trust in the public patent records system.

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