How are reasons for patentability provided in ex parte reexamination?
In ex parte reexamination, examiners are required to provide reasons for patentability, unless all claims are canceled in the proceeding. These reasons are typically provided as an attachment to the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC).
According to MPEP 2287: “In the attachment to the NIRC, the examiner should indicate why the claims found patentable in the reexamination proceeding are clearly patentable over the cited patents or printed publications. This is done in a manner similar to that used to indicate reasons for allowance in an application.”
The MPEP provides two options for presenting these reasons:
- Using form PTOL-476, titled “REASONS FOR PATENTABILITY AND/OR CONFIRMATION”
- Using form paragraph 22.16, which is a preferred alternative
These reasons help to clarify the examiner’s rationale for finding claims patentable and provide a clear record of the examination process.
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