Can an examiner make an examiner’s amendment in a merged reissue/inter partes reexamination proceeding?
An examiner can make an examiner’s amendment in a merged reissue/inter partes reexamination proceeding, but only in very limited circumstances. The MPEP states:
“The only times that an examiner’s amendment can be made in conjunction with a Notice of Allowability are where the patent owner authorization need not be obtained.”
These limited circumstances include:
- Formal matters such as grammar, incorrect spelling, or incorrect number that do not involve a rejection, do not go to the merits, and do not require examiner to obtain approval.
- Changes to the title.
The MPEP further clarifies: “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 Notice of Allowability.”
All examiner’s amendments in a merged proceeding must be made by formal examiner’s amendment accompanying the Notice of Allowability to provide notice to both the patent owner/reissue applicant and the third party requester.
To learn more: