What happens if a patent owner doesn’t file a submission after an ACP?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. If a patent owner doesn’t file a submission after an Action Closing Prosecution (ACP) in inter partes reexamination, the following occurs: The third party requester is precluded from filing comments under 37 CFR 1.951(b) A Right of Appeal Notice (RAN) will be issued The patent owner does not lose any rights of appeal MPEP 2672 states: “If the patent owner does not timely file comments or a proposed amendment pursuant to 37 CFR 1.951(a), then the third party requester is precluded from filing comments under 37 CFR 1.951(b). Accordingly, a Right of Appeal Notice (RAN) will be issued where the time for filing the patent owner comments and/or amendment has expired and no patent owner paper containing comments or amendment has been received.” Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Citations by Patent Owner and Third Party Requester in Inter Partes Reexamination MPEP 2202 Third Party Requester Must Not File Statement MPEP 2251 Permitted Patent Owner Cannot File for Third Party MPEP 2251 Prohibited Third Party Requester Cannot Appeal Patent Owner’s Decision MPEP 2273 Prohibited Third Party Requester Cannot Appeal MPEP 2273 Prohibited No Acceptance After September 16, 2012 MPEP 2672 Third Party Requester Cannot Seek Judicial Review After Ex Parte Reexamination MPEP 2279 Prohibited Reply by Third Party Requester Not Acceptable After Response MPEP 2251 Permitted Third Party Requester Must Reply Within 2 Months MPEP 2251 Third Party Requester Must Serve Reply on Patent Owner MPEP 2251 Required Other Related FAQs 5 FAQs Collapse Can a patent owner challenge a premature Action Closing Prosecution (ACP)? What are the limitations on patent owner submissions after an A...