How are reasons for patentability provided in a NIRC?

Reasons for patentability must be provided for every claim identified as patentable in the Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC), unless all claims are canceled. The process involves:

1. Indicating why the claims found patentable are clearly patentable over cited patents or printed publications.
2. Using a manner similar to indicating reasons for allowance in an application (see MPEP § 1302.14).
3. Referring to particular portions of the record that clearly establish patentability, if the record is clear.
4. Using Form PTOL-476 or form paragraph 26.70 to set forth the reasons.

The MPEP states: Reasons for patentability must be provided, unless all claims are canceled in the proceeding. Check the appropriate box on Form PTOL-2068 and provide the reasons as an attachment.

It’s important to note that 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.

To learn more:

• Reasons for Patentability
• NIRC
• Inter Partes Reexamination
• USPTO Procedures