How are examiner’s amendments handled in inter partes reexamination proceedings?

Examiner’s amendments in inter partes reexamination proceedings are handled differently from regular patent applications due to the prohibition of interviews. Key points include:

1. Examiner’s amendments can only be made without patent owner authorization.
2. They must be included as a formal examiner’s amendment accompanying the Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC).
3. The amendments must comply with the requirements of 37 CFR 1.530(d)-(j) in amending the patent.
4. Full text of any paragraph or claim to be changed must be presented with 37 CFR 1.530(f) markings.
5. The only exception to the full text presentation is the deletion of an entire claim or paragraph.

The MPEP states: The examiner’s amendment must comply with the requirements of 37 CFR 1.530(d) – (j) in amending the patent.

It’s important to note that any change going to the merits of the case cannot be made by examiner’s amendment accompanying the NIRC and would require reopening of prosecution.

To learn more:

• Examiner’s Amendments
• Inter Partes Reexamination
• NIRC
• USPTO Procedures