Can an examiner make an examiner’s amendment in a merged reissue/inter partes reexamination proceeding?

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.

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.