2687 Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) and Conclusion of Reexamination Proceeding [R-11.2013]
Upon conclusion of the inter partes reexamination proceeding, the examiner must complete a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) by filling out Form PTOL-2068. If appropriate, an examiner’s amendment will also be prepared. Where the claims are found patentable, reasons must be given for each claim found patentable. See the discussion as to preparation of an examiner’s amendment and reasons for allowance found at the end of this section. In addition, the examiner must prepare the reexamination file so that the Office of Data Management can prepare and issue a certificate in accordance with 35 U.S.C. 316 and 37 CFR 1.997 and setting forth the results of the reexamination proceeding and the content of the patent following the proceeding. See MPEP § 2688.
I. INSTANCES WHERE A NIRC WOULD BE APPROPRIATE
The following are the only instances when issuance of a NIRC action would be proper in an inter partes reexamination proceeding:
- (A) There is no timely response by the patent owner to an Office action requiring a response. If all claims are under rejection, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). All claims will be canceled by formal examiner’s amendment.
- (B) After a Right of Appeal Notice (RAN) where no party to the reexamination timely files a notice of appeal.
- (C) After filing of a notice of appeal, where all parties who filed a notice of appeal or notice of cross appeal fail to timely file an appellant brief (or fail to timely complete the brief, where the appellant brief is noted by the examiner as being incomplete).
- (D) After a final decision by the Board, where there is no further timely appeal to the Court of Appeals for the Federal Circuit nor is there a timely request for rehearing by the Board.
- (E) After the Federal Court appeal process has been completed and the case is returned to the examiner.
II. PREPARATION OF THE NIRC ACTION
A. No Allowed Claims
Where all claims are rejected or objected to in the prior Office action, the examiner will issue a NIRC indicating that all claims have been canceled and terminating the prosecution. The cover sheet to be used is Notice of Intent to Issue Reexamination Certificate Form PTOL-2068. As an attachment to the NIRC cover sheet, the examiner will draft an examiner’s amendment canceling all live claims in the reexamination proceeding. Check the appropriate box on PTOL-2068. In the remarks of the examiner’s amendment, the examiner should point out why the claims have been canceled. Since all claims are being canceled in the proceeding, no reasons for patentability are attached. No panel review conference is needed in this instance, as the issuance of the NIRC is essentially ministerial.
B. At Least One Allowed Claim
If at least one claim is free of rejection and objection, the examiner will issue a NIRC, in which all patentable claims and canceled claims will be identified. All rejected or objected claims will be canceled by formal examiner’s amendment (attached as part of the NIRC). Check the appropriate box on Form PTOL-2068. In the remarks section of the examiner’s amendment, the examiner should point out why the claims have been canceled. As to the patentable claims, reasons for patentability must be provided for all such claims. After the examiner has determined that the reexamination proceeding is ready for the NIRC, the examiner will formulate a draft preliminary NIRC with attachments as needed. The examiner will then inform his/her Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) of his/her intent to issue the NIRC. The CRU SPRS/TC QAS will convene a panel review conference, and the conference members will review the patentability of the remaining patentable claim(s) pursuant to MPEP § 2671.03. If the conference confirms the examiner’s preliminary decision, the proposed NIRC shall be issued and signed by the examiner, with the two or more other conferees initialing the action (as “conferee”) to indicate their presence in the conference. If the conference does not confirm the examiner’s decision (e.g., it is determined that one or more of the remaining claims should be rejected), then the examiner will reevaluate and issue an appropriate Office action. A panel review conference is not to be held as to any claim that was in the case (proceeding) at the time the case was reviewed by the Board or a federal court.
III. EXAMINER’S AMENDMENT TO PLACE PROCEEDING IN CONDITION FOR NOTICE OF INTENT TO ISSUE INTER PARTES REEXAMINATION CERTIFICATE
Interviews, both personal and telephone are not permitted in an inter partes reexamination proceeding (see MPEP § 2685). Thus, the examiner is not permitted to telephone the patent owner to obtain authorization to make an amendment. Accordingly, the only times that an examiner’s amendment can be made in conjunction with a NIRC are where the patent owner authorization need not be obtained. Such amendments include:
- (A) An examiner’s amendment to deal with formal matters such as grammar, incorrect spelling, or incorrect number; i.e., matters that do not involve a rejection, do not go to the merits, and do not require the examiner to obtain approval.
- (B) An examiner’s amendment to change the title.
- (C) An examiner’s amendment to cancel all rejected and objected claims in the proceeding, when the patent owner fails (1) to timely respond (where a response is required), (2) to timely appeal, or (3) to take further action to maintain an appeal.
- (D) If a patent expires during the pendency of a reexamination proceeding for that patent, all amendments to the patent claims and all claims added during the proceeding must be withdrawn. The examiner’s amendment is to include a statement such as:
“As the patent being reexamined has expired during the pendency of the present reexamination proceeding, all amendments made during the proceeding are improper, and are hereby expressly withdrawn.”
If it has not previously been done in the proceeding, a diagonal line should be drawn across a copy of all amended and new claims (and text added to the specification) residing in the amendment papers, and scanned into the Image File Wrapper (IFW).
See also MPEP § 1302.04 et. seq. as to examiner’s amendments not needing authorization by an applicant or a patent owner. Note, however, that in an inter partes reexamination proceeding (as opposed to an application) all such examiner’s amendments must be made by formal examiner’s amendment accompanying the NIRC, in order to provide notice of the changes made in the patent being reexamined to both the patent owner and the third party requester.
Note that any change going to the merits of the case (i.e., more than a formal matter) could not be made by examiner’s amendment accompanying the NIRC. Rather, a change going to the merits would require (1) reopening of prosecution with the approval of the CRU Director, (2) an Office action suggesting the change to patent owner, (3) a formal amendment submitted by the patent owner, and (4) an opportunity for the third party requester to comment on the patent owner’s submission.
Where an examiner’s amendment is to be prepared, Box 9 of Form PTOL-2068 (Notice of Intent to Issue a Reexamination Certificate) is checked, and form paragraph 26.69 is used to provide the appropriate attachment:
¶ 26.69 Examiner’s Amendment Accompanying Notice of Intent to Issue Reexamination Certificate
An examiner’s amendment to the record appears below. The changes made by this examiner’s amendment will be reflected in the reexamination certificate to issue in due course.
Thus, if a portion of the text is amended more than once, the examiner’s amendment should indicate all changes (insertions and deletions) in relation to the current text in the patent under reexamination, not in relation to a prior amendment made during the proceeding.
In addition, the examiner’s amendment requires presentation of the full text of any paragraph or claim to be changed, with 37 CFR 1.530(f) markings. Examiners’ amendments in reexamination are not subject to the exceptions to this requirement which are provided for applications in 37 CFR 1.121(g) and which do not apply to reexamination proceedings. See MPEP § 2250. The only exception to the full text presentation requirement is that an entire claim or an entire paragraph of specification may be deleted from the patent by a statement deleting the claim or paragraph without the presentation of the text of the claim or paragraph.
IV. REASONS FOR PATENTABILITY AND/OR CONFIRMATION
Reasons for patentability must be provided, unless all claims are canceled in the proceeding. Check the appropriate box on Form PTOL-2068 and provide the reasons as an attachment. In the attachment to the NIRC, the examiner should indicate why the claims found patentable in the reexamination proceeding are clearly patentable over the cited patents or printed publications. This is done in a manner similar to that used to indicate reasons for allowance in an application. See MPEP § 1302.14. Where the record is clear as to why a claim is patentable (which should be the usual situation, in view of the inter partes nature of the proceeding), the examiner may simply refer to the particular portions of the record which clearly establish the patentability of that claim. In any event, reasons for patentability must be provided for every claim identified as patentable in the NIRC, and the patent owner must be notified in the NIRC that it has an opportunity to provide comments on the statement of the reasons for patentability.
The reasons for patentability may be set forth on Form PTOL-476, entitled “REASONS FOR PATENTABILITY AND/OR CONFIRMATION.” However, as a preferred alternative to using Form PTOL-476, the examiner may instead use form paragraph 26.70.
¶ 26.70 Reasons for Patentability and/or Confirmation in Inter Partes Reexamination
STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
The following is an examiner’s statement of reasons for patentability and/or confirmation of the claims found patentable in this reexamination proceeding: 
Any comments considered necessary by the PATENT OWNER regarding the above statement must be submitted promptly to avoid processing delays. Such submission by the patent owner should be labeled: "Comments on Statement of Reasons for Patentability and/or Confirmation" and will be placed in the reexamination file.
This form paragraph may be used as an attachment to the Notice of Intent to Issue Inter Partes Reexamination Certificate, PTOL-2068 (item number 3).
Original patent claims that are found patentable in a reexamination proceeding are generally to be designated as “confirmed” claims, while new claims and amended patent claims are generally to be designated as “patentable” claims. However, for purposes of the examiner setting forth reasons for patentability or confirmation, the examiner may use “patentable” to refer to any claim that defines over the cited patents or printed publications. There is no need to separate the claims into “confirmed” and “patentable” categories when setting forth the reasons.
Where all claims are canceled in the proceeding, no reasons for patentability are provided.
V. PREPARATION OF THE CASE FOR PUBLICATION
As to preparing the inter partes reexamination file for publication of the certificate, see MPEP § 2287 for guidance. The preparation of an inter partes reexamination proceeding for publication is carried out in the same manner that an ex parte reexamination proceeding is prepared for publication.
The examiner must complete the examiner preparation of the case for reexamination certificate by completing an Examiner Checklist Reexamination form, PTOL-1516. The Legal Instrument Examiner (LIE) must complete a Reexamination Clerk Checklist form, PTOL-1517. The case is reviewed by the CRU SPRS/TC QAS.
After the reexamination file and its contents are reviewed, the NIRC will be mailed, and appropriate PALM work and update scanning will be carried out. The reexamination proceeding will then be forwarded, via the appropriate Office, to the Office of Data Management for printing.
VI. REEXAMINATION REMINDERS
The following items deserve special attention. The examiner should ensure they have been correctly completed or followed before forwarding the case to the CRU SPRS or TC QAS for review.
- (A) All patent claims for which a substantial new question of patentability or reasonable likelihood of prevailing had been found must have been examined. See MPEP § 2643.
- (B) No renumbering of patent claims is permitted. New claims may require renumbering. See MPEP §§ 2666.01 and 2250.
- (C) Amendments to the description and claims must conform to requirements of 37 CFR 1.530(d)-(k). This includes any changes made by examiner’s amendment. If a portion of the text is amended more than once, each amendment should indicate all of the changes (insertions and deletions) in relation to the current text in the patent under reexamination. See MPEP §§ 2666.01 and 2250.
- (D) The prior art must be listed on a form PTO-892, PTO-1449, PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having format equivalent to one of these forms). These forms must be properly completed. See MPEP § 2657.
- (E) The examiner and clerk checklists PTO-1516 and PTO-1517 must be entirely and properly completed. A careful reading of the instructions contained in these checklists is essential. The clerk checklist is designed as a check and review of the examiner’s responses on the examiner checklist. Accordingly, the clerk should personally review the file before completing an item. The clerk should check to make certain that the responses to all related items on both checklists are in agreement.
- (F) Multiple copending reexamination proceedings are often merged. See MPEP § 2686.01.
- (G) Where the reexamination proceeding is copending with an application for reissue of the patent being reexamined, the files must have been forwarded to the Office of Patent Legal Administration (OPLA) for a consideration of potential merger, with a decision on the question being present in the reexamination file. See MPEP § 2686.03.
- (H) Reasons for patentability and/or confirmation are required for each claim found patentable.
- (I) There is no issue fee in reexamination. See MPEP § 2634.
- (J) The patent claims may not be amended nor new claims added after expiration of the patent. See MPEP § 2666.01 and § 2250.
- (K) Original drawings cannot be physically changed. "Amended" or "New" figures must be appropriately labeled as such and presented on new sheets in compliance with 37 CFR 1.84. See 37 CFR 1.530(d)(3) and MPEP § 2666.02.
- (L) An amended or new claim may not enlarge the scope of the patent claims. See MPEP §§ 2658, 2666.01, and 2250.
- (M) If the patent has expired, all amendments to the patent claims and all claims added during the proceeding must be withdrawn. Further, all presently rejected and objected claims are canceled by examiner’s amendment. See MPEP § 2250, subsection on “Amendment After the Patent Has Expired.”
A. Handling of Multiple Dependent Claims
For treatment of multiple dependent claims when preparing a reexamination proceeding for publication of the reexamination certificate, see the discussion in MPEP § 2287.
B. The Title of the Patent
Normally, the title will not need to be changed during reexamination. If a change of the title is necessary, it should have been pointed out as early as possible in the prosecution, as a part of an Office Action. An informal examiner’s amendment (i.e., changing the title and merely initialing the change) is not permitted in reexamination.
VII. REEXAMINATION PROCEEDINGS IN WHICH ALL THE CLAIMS ARE CANCELED
There will be instances where all claims in the reexamination proceeding are to be canceled. This would occur where the patent owner fails to timely respond to an Office action, and all live claims in the reexamination proceeding are under rejection. This would also occur where all live claims in the reexamination proceeding are to be canceled as a result of a decision of the Board affirming the examiner, and the time for appeal to the court and for requesting rehearing has expired. In these instances the examiner will issue a NIRC indicating that all claims have been canceled and terminating the prosecution. As an attachment to the NIRC, the examiner will draft an examiner’s amendment canceling all live claims in the reexamination proceeding. In the examiner’s amendment, the examiner should point out why the claims have been canceled. For example, the examiner might state one of the two following examples, as is appropriate:
“Claims 1-8 (all live claims in the proceeding) were subject to rejection in the last Office action mailed 9/9/99. Patent owner failed to timely respond to that Office action. Accordingly, claims 1-8 have been canceled. See 37 CFR 1.957(b) and MPEP § 2666.10.”
“The rejection of claims 1-8 (all live claims in the proceeding) has been affirmed in the Board decision of 9/9/99, and no timely appeal to the court has been filed. Accordingly claims 1-8 have been canceled.”
In order to physically cancel the live claims in the reexamination file history, brackets should be placed around all the live claims on a copy of the claims printed from the file history, and the copy then scanned into the file history. All other claims in the proceeding should have previously been either replaced or canceled.
The examiner will designate a canceled original patent claim, to be printed in the Official Gazette, on the Issue Classification IFW form in the appropriate place for the claim chosen.
A panel review conference is not to be held because the proceeding is to be concluded by the cancellation of all claims.
2687.01 Examiner Consideration of Submissions After NIRC [R-11.2013]
The rules do not provide for an amendment to be filed in an inter partes reexamination proceeding after a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) has been issued. Note that 37 CFR 1.312 does not apply in reexamination. Any amendment, information disclosure statement, or other paper related to the merits of the reexamination proceeding filed after the NIRC (except as indicated immediately below) must be accompanied by a petition under 37 CFR 1.182. The petition must be granted, in order to have the amendment, information disclosure statement, or other paper related to the merits considered. Where an amendment, information disclosure statement, or other paper related to the merits of the reexamination proceeding is filed after the NIRC, and the accompanying petition under 37 CFR 1.182 is granted, the examiner will reconsider the case in view of the new information, and if appropriate, will reopen prosecution. See MPEP § 2656 for a detailed discussion of the criteria for obtaining entry and consideration of information disclosure statement filed after the NIRC.
Interviews, both personal and telephone, are not permitted in an inter partes reexamination proceeding (see MPEP § 2685). Thus, the examiner is not permitted to telephone the patent owner and obtain authorization to make an amendment. The only time an examiner’s amendment can be made in an inter partes reexamination after the NIRC has been issued is where an examiner’s amendment is needed to address matters that do not require the patent owner’s approval. However, matters that do not require the patent owner’s approval are generally minor formal matters. Thus, it would be rare for an examiner to need to withdraw the issued NIRC for issuance of a new NIRC with an examiner’s amendment, since withdrawal of the NIRC should not be done for minor formal matters. In view of this, any examiner’s amendment in an inter partes reexamination proceeding to be made after a NIRC (has been issued) requires the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) to approve the examiner’s amendment.
Any “Comments on Statement of Reasons for Patentability and/or Confirmation” which are received will be placed in the reexamination file, without comment. This will be done even where the reexamination certificate has already issued.