MPEP Q & A 189: Issuance of NIRC Action in Inter Partes Reexamination Proceeding

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Question:

Name one instance when issuance of a NIRC action would be proper in an inter partes reexamination proceeding.

Answer:

The following are the only instances when issuance of a NIRC action would be proper in an inter partes reexamination proceeding:

  • There is no timely response by the patent owner to an Office action requiring a response. If all claims are under rejection, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). All claims will be canceled by formal examiner’s amendment.
  • After a Right of Appeal Notice (RAN) where no party to the reexamination timely files a notice of appeal.
  • After filing of a notice of appeal, where all parties who filed a notice of appeal or notice of cross appeal fail to timely file an appellant brief (or fail to timely complete the brief, where the appellant brief is noted by the examiner as being incomplete).
  • After a final decision by the Board, where there is no further timely appeal to the Court of Appeals for the Federal Circuit nor is there a timely request for rehearing by the Board.
  • After the Federal Court appeal process has been completed and the case is returned to the examiner.

Chapter Details:

The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers Optional Inter Partes Reexamination.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2687 of the MPEP.  The following is a brief summary of this section:

2687  Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) and Conclusion of Reexamination Proceeding

Upon conclusion of the inter partes reexamination proceeding, the examiner must complete a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). If appropriate, an examiner’s amendment will also be prepared. Where the claims are found patentable, reasons must be given for each claim found patentable.

This section covers further details on the NIRC such as instances where a NIRC would be appropriate, preparation of the NIRC action, examiner’s amendment to place the proceeding in condition for notice of intent to issue an inter partes reexamination certificate, reasons for patentability and/or confirmation, preparation of the case for publication, and reexamination proceedings in which all the claims are canceled.