How do intervening rights apply to ex parte reexamination certificates?

How do intervening rights apply to ex parte reexamination certificates?

Intervening rights apply to ex parte reexamination certificates in the same way they apply to reissue patents. According to MPEP 2293:

“35 U.S.C. 307(b) provides that statements in an ex parte reexamination certificate do not have the effect of the statements provided in 35 U.S.C. 252 unless a claim of the patent as interpreted by the ex parte reexamination certificate is identical to a claim in the original patent.”

This means that:

• If a claim in the reexamination certificate is identical to a claim in the original patent, intervening rights do not apply.
• If a claim is amended or a new claim is added during reexamination, intervening rights may apply to that claim.

The determination of whether a claim is “identical” is based on a comparison of the scope of the claim, not just the literal wording. Any change that affects the scope of the claim can trigger intervening rights.

To learn more:

• intervening rights
• ex parte reexamination
• reexamination certificate
• identical claims