What should be included in an Action Closing Prosecution (ACP)?

An Action Closing Prosecution (ACP) in an inter partes reexamination should include several key elements. According to MPEP 2671.02, the content of an ACP should:

• Address all issues related to patents or printed publications
• Clearly set forth each rejection proposed by the third party requester that the examiner refuses to adopt
• Provide reasons why rejected proposed rejections are not appropriate
• Give comprehensive reasons for patentability for each determination favorable to patentability of claims
• Include a rebuttal of any arguments raised in the patent owner’s response
• Reflect consideration of any comments made by the third party requester

The MPEP states: “The grounds of rejection and determinations of patentability must (in the ACP) be clearly developed to such an extent that the patent owner and the third party requester may readily judge the advisability of filing comments after an ACP pursuant to 37 CFR 1.951(a) and (b), respectively.”

Additionally, the ACP should review any amendatory matter submitted by the patent owner for compliance with 35 U.S.C. 112, but only for the revised or newly added material.

To learn more:

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