Provisional Rights vs 'Intervening Rights'

Question

Provisional rights are intended to give remedy to a patentee who's issued claims were infringed during prosecution. See here.

On the other hand, are any sort of "intervening rights" (usually reserved for amendments during reissue, reexam, or PTAB trial) available to a commercializer who began use of filed/disclosed but not initially claimed matter that is later claimed via amendments or a continuation application? (Note that prior user rights would not apply.) It's a question of what is considered equitable public notice.

Consider the cases of an application that has claimed narrower than one would like to commercialize (e.g. originally claims 'ABC', but only want to use 'AB'), or the case of an application that discloses multiple distinct inventions that will be the subject of divisionals/continuations (e.g. application discloses 'ABC' and 'DEF', but only claims 'DEF' for now).

Do some form of "intervening rights" exist in such scenarios? Does the party interested in commercializing the disclosed-but-presently-unclaimed matter have to wait around for the patent term to expire to avoid the patentee explicitly mapping the claims to his/her product, or bear the burden of determining what subject matter in the application the patentee has a right to claim? It seems like this would be too big a burden on those performing FTO/clearance searches, but I can also appreciate that such intervening rights could be abused if too lenient.

Answer 1

I would assume there are no such 'intervening rights' for amended or continuation application claims based on this article, which from reiterates Kingsdown v Hollister (1988):

... nor is it in any manner improper to amend or insert claims intended to cover a competitor’s product the applicant’s attorney has learned about during the prosecution of a patent application.

Also, this 2010 article acknowledges the risks of competitors practicing disclosed-but-substantially-unclaimed subject matter, again implying that no such intervening rights exist:

The effect of amending a claim is partially retroactive. While an amended claim cannot cover devices that were sold prior to the amendment, it can have retroactive effect against long-term investments. For example, a patentee changes his patent on four-legged tables to cover three-legged tables. This patentee cannot obtain royalties on the three-legged tables sold before the amendment receives patent office approval. However, the competitor who built a factory for manufacturing three-legged tables probably intended the factory to last for twenty years or more. The patentee can force his competitor to shut down the entire factory. This "hold-up" leverage allows a claim amendment to have significant retroactive bite

Finally, a 2003 article from Mark Lemley et. al.:

... continuation practice can be – and has been – used strategically to gain advantages over competitors by waiting to see what product the competitor will make and then drafting patent claims specifically designed to cover that product.

In the most extreme cases, patent applicants add claims during the continuation process to cover ideas they never thought of themselves, but instead learned from a competitor.

In fact, Lemley et. al. propose the idea of intervening rights for the pre-issuance/continuation amendments:

Another alternative that would eliminate many of the perils of submarine patents would be the creation of intervening rights for competitors who began making, using, or selling the patented invention prior to the broadening continuation.