2687 Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) and Conclusion of Reexamination Proceeding
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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:
- 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.
- After a Right of Appeal Notice (RAN) where no party to the reexamination timely files a notice of appeal.
- 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).
- 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.
- 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.
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).
As to the patentable claims, reasons for patentability must be provided for all such claims.
III. EXAMINER’S AMENDMENT TO PLACE PROCEEDING IN CONDITION FOR NOTICE OF INTENT TO ISSUE INTER PARTES REEXAMINATION CERTIFICATE
Interviews are not permitted in an inter partes reexamination proceeding.
IV. REASONS FOR PATENTABILITY AND/OR CONFIRMATION
Reasons for patentability must be provided, unless all claims are canceled in the proceeding.
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.
V. PREPARATION OF THE CASE FOR PUBLICATION
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.
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.
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.
2687.01 Examiner Consideration of Submissions After NIRC
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