Terms and Concepts

Notice of Intent (NIRC)

Notice of Intent to Issue a Reexamination Certificate (NIRC) informs the parties that a reexamination proceeding has been terminated, whether by failure of a party to timely file a required response, or by the natural resolution of all outstanding issues of claim patentability.

Reexamination proceedings do not become “abandoned.”  Rather, a NIRC is mailed to inform the parties that a reexamination certificate will issue. Overall pendency is calculated from the filing date accorded (e.g. upon meeting the requirements of 37 CFR 1.510 or 1.915) to termination of the proceeding, signified by issuance of this notice.

The NIRC lists the status of all claims that were subject to reexamination, including any patent claims that have been canceled and any claims added during the proceeding that were not part of the patent that were reexamined and determined to be patentable.  The NIRC also indicates which patent claims, if any, were not reexamined.  An NIRC may include an examiner’s amendment, and must include reasons for confirmation of any patent claims that were determined to be patentable without amendment, and reasons for allowance of any amended patent claims or any newly added claims [MPEP 2287].

First Office Action to NIRC

The time from receipt of a FOAM to Notice of Intent to Issue a Reexamination Certificate (NIRC) is an elusive pendency metric. The USPTO publishes operational statistics, however, estimates are often skewed by the number of “abandoned” reexamination proceedings (where a NIRC automatically issues) averaged indiscriminately along with those where the patent owner and or third party engaged in extensive petitioning and utilized all response opportunities.

NIRC to Certificate Issuance

Announcement signifies notice to the public that a reexamination proceeding has concluded and specifies the status of the claims. Issuance of a reexamination certificate is announced in the Official Gazette (MPEP 2691) under “Granted Patents” and summarizes the outcome of the proceeding. The average time from NIRC to publication of the certificate in the Official Gazette is similarly an evolving metric, insofar as it varies signficantly from quarter to quarter.