What is the significance of “identical” claims in patent reexamination and intervening rights?

What is the significance of “identical” claims in patent reexamination and intervening rights?

The concept of “identical” claims is crucial in determining whether intervening rights apply in patent reexamination. According to MPEP 2293:

“A claim of the patent which is substantially identical to a claim of the original patent (for example, amended to improve clarity) will not be deemed to be a ‘new’ claim.”

The significance of identical claims includes:

• If a claim in the reexamination certificate is identical to a claim in the original patent, intervening rights do not apply to that claim.
• “Identical” does not mean verbatim the same; it refers to claims that are substantially identical in scope.
• Minor changes for clarity that do not affect the scope of the claim will not trigger intervening rights.
• Determining whether claims are identical requires careful analysis of their scope, not just their wording.

This interpretation ensures that patent holders cannot circumvent intervening rights by making superficial changes to claims while maintaining their original scope.

To learn more:

• identical claims
• intervening rights
• patent reexamination
• claim scope