What options does a patent owner have after receiving an Action Closing Prosecution (ACP)?

After receiving an Action Closing Prosecution (ACP) in an inter partes reexamination, the patent owner has specific options as outlined in MPEP 2671.02:

1. File written comments: “Pursuant to 37 CFR 1.951(a), the patent owner may once file written comments limited to the issues raised in the reexamination proceeding and/or present a proposed amendment to the claims which amendment will be subject to the criteria of 37 CFR 1.116 as to whether it shall be entered and considered.”
2. Time limit: “Such comments and/or proposed amendments must be filed within a time period of 30 days or one month, whichever is longer, from the mailing date of this action.”

It’s important to note that if the patent owner does not respond to the ACP, they may limit their options in the proceeding. The MPEP states: “If the patent owner fails to respond to the first Office action (or a subsequent action), the proceeding will be limited to the claims found patentable and to new claims which do not expand the scope of the claims found patentable.”

After the patent owner’s response, the third party requester may file comments within 30 days. Following this, the examiner will consider the submissions and either issue a Right of Appeal Notice (RAN) or reopen prosecution if necessary.

To learn more:

• Action Closing Prosecution
• ACP response options
• inter partes reexamination
• patent examination
• USPTO procedure