Can amendments be made after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC)?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Yes, limited amendments can be made after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) is issued. The MPEP provides specific guidance on this: “In some instances, even after a NIRC has been issued, amendments affecting the claims may be made.” ( MPEP 2287 ) However, these amendments are restricted to: Cancellation of claims Correcting formal matters in the specification or drawings Correcting formal matters in a claim It’s important to note that substantive amendments or new claims are not permitted at this stage. Any amendments must be approved by the examiner and should not require additional searching or consideration of prior art. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Notice of Intent to Issue Ex Parte Reexamination Certificate Must Be Prepared MPEP 2287 Required Notice of Intent to Issue Reexamination Certificate Required MPEP 2287 Notice of Intent to Issue Reexamination Certificate Terminates Prosecution MPEP 2287 Notice of Intent to Issue Reexamination Certificate Required When Conference Confirms Examiner’s Decision MPEP 2287 Required New Claims May Require Re-numbering MPEP 2287 Permitted Amended or New Claims Must Not Enlarge Patent Scope MPEP 2287 Prohibited Review Required for Reexamination Certificate MPEP 2287 Required No Re numbering of Patent Claims Allowed MPEP 2287 Permitted Amendments Must Conform to Examiner’s Requirements MPEP 2287 Required Conference to Review Patentability of Claims MPEP 2287 Other Related FAQs 5 FAQs Collapse What happens if all claims are disclaimed in a patent under reexamination? How are canceled claims handled in the ex parte reexamination certificate? What happens if all claims ar...