Normally, the title of the patent will not need to be changed during reexamination. In those very rare instances where a change of the title does become necessary, the examiner should point out the need for the change as early as possible in the prosecution, as a part of an Office action. This will give the patent owner an opportunity to comment on the change prior to the examiner’s formal change in the title via an examiner’s amendment accompanying the Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) at the time that the prosecution of the reexamination proceeding is to be terminated. A change in the title in a reexamination can only be effected via a formal examiner’s amendment accompanying the NIRC. Changing the title and merely initialing the change is not permitted in reexamination.
While a change in the title may be commented on by the patent owner, the final decision as to the change is that of the examiner, and the examiner’s decision is not subject to review. Accordingly, where the examiner notes the need for a change at the time of issuing the NIRC, the examiner may make the change at that point, even though the patent owner will not have an opportunity to comment on the change.
An example of a situation where it would be appropriate to change the title is where all the claims directed to one of the categories of invention (in the patent) are canceled via the reexamination proceeding, it would be appropriate to change the title to delete reference to that category.