By: Paul F. Morgan

Re “intervening rights,” it is the same for reissues as it is for old and new reeexaminations. It is not a problem unless one delays fixing one’s claims until AFTER others have completed their efforts and investments and overcome risks to develop, manufacture, and market their products for the benefit of the public. The rationale for intervening rights is that companies should have the right not to have their business progress impeded by clearly invalid claims even in the [unusual] event that they could even be aware of a patent with such invalid claims that might somehow be sufficiently amended in post grant proceedings to become valid. Also, not to have such years-later “rescued from the grave” patent claims become a retroactive basis for retroactive infringement damages.
I fully appreciate that many companies are now unwilling to pay for quality patent preparation or prosecution, often doing so as cheaply as possible without any prior art investigation, yet expect trial lawyers to somehow repair or salvage such claims much later if they are asserted. But that is not conduct that should be rewarded by extending it into post-grant PTO proceedings.