Can a patent owner challenge a premature Action Closing Prosecution (ACP)?

Yes, a patent owner can challenge a premature Action Closing Prosecution (ACP) in inter partes reexamination. The process is as follows:

• File comments under 37 CFR 1.951(a)
• Additionally, file a petition under 37 CFR 1.181 to challenge the making of the action an ACP
• The petition must be filed within the time period for filing comments under 37 CFR 1.951(a)

MPEP 2672 states: “If the patent owner is of the opinion that the Office action closing prosecution (ACP) in the inter partes reexamination proceeding is premature, the patent owner may, in addition to the comments submitted under 37 CFR 1.951(a), file a petition under 37 CFR 1.181 (to challenge the making of the action an ACP) within the time period for filing the comments under 37 CFR 1.951(a).”

To learn more:

• inter partes reexamination
• Action Closing Prosecution
• premature ACP
• petition