The U.S. Court of Appeals for the Federal Circuit’s March 15 divided en banc opinion in Marine Polymer Technologies v. HemCon created a gaping loophole in the long-standing “intervening rights” doctrine. Intervening rights essentially protect the public’s reliance on the scope of an issued patent. If a patentee makes substantive changes to the scope of a patent through post-issuance procedures such as reissue or re-examination, “intervening rights” are afforded to third parties who relied on the previous scope of the patent and had already begun to make, use or sell a given article that is now newly infringing under the modified patent. The Marine Polymer court’s holding has narrowed this doctrine to apply only in instances where the revision includes additional or literally amended claims. Now, if a patentee revises the scope of its patent without adding or amending claims, such as via argument with the U.S. Patent and Trademark Office or by dropping claims, then a potential defendant can no longer rely on an intervening rights defense.
The doctrine of intervening rights has a long history in common law. Early cases speak of “acquired rights” by third parties due to a patent being “altered at the patent office since it originally issued.” Often applied when a patentee broadens a claim through reissue, the doctrine is also applicable when a patentee narrows a claim to avoid invalidity. Failure to recognize intervening rights has been said to leave the door open for “gross injustice.”
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