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A Consideration with Post-Issuance Practice: Intervening Rights

By Paul K. Legaard and Margaret M. Buck

The day you have been waiting for has finally come. The patent application that your company believes covers key technology has issued. Your company may be, for example, a startup with its first marketable product or an established business trying to extend its presence in a niche market or enter into a new one. The patent provides your company the desired protection of the marketplace. There's just one problem. It appears that the scope of the patent may need to be altered to improve your position in the marketplace. For instance, a competitor may have successfully designed around the scope of your patent's claims. In some such instances, there may not be a pending application by which you, the patent owner, can capture the competitor, and post-issuance practice is the only mechanism. So, amending your claims, eg, to read on your competitor's products may seem like a sure way to capture him as an infringer and strengthen your position.

Although valid mechanisms for amending a patent may be used to improve your patent's claim scope, careful consideration beforehand of the apparent need of the amendment and its possible effects should be made. One potentially large effect is the triggering of intervening rights for an infringer of the amended patent. A patent owner needs to understand what they are, when they can be used, and the possible effect arising from them.

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