What are the time limits for patent owner submissions after an ACP?
The time limits for patent owner submissions after an Action Closing Prosecution (ACP) are as follows: The submission must be filed within the time period set for response to the ACP, typically 30 days or one month (whichever is longer) from the ACP mailing date. An extension may be requested under 37 CFR 1.956, but…
Read MoreWhat are the third party requester’s rights after a patent owner’s submission following an ACP?
After a patent owner’s submission following an Action Closing Prosecution (ACP), the third party requester has the following rights: File one set of comments responsive to the patent owner’s submission Comments must be filed within 30 days from the date of service of the patent owner’s submission Comments are limited to responding to the patent…
Read MoreWhat are the options for patent owners after an Action Closing Prosecution (ACP) in inter partes reexamination?
After an Action Closing Prosecution (ACP) in inter partes reexamination, the patent owner has the following options: File written comments limited to the issues raised in the reexamination proceeding Present a proposed amendment to the claims According to MPEP 2672, “The patent owner submission under 37 CFR 1.951(a) of comments and/or proposed amendment must be…
Read MoreWhat are the limitations on patent owner submissions after an ACP?
Patent owner submissions after an Action Closing Prosecution (ACP) in inter partes reexamination are subject to the following limitations: Comments must be limited to issues raised in the ACP Proposed amendments are subject to the criteria of 37 CFR 1.116 Only one submission is allowed under 37 CFR 1.951(a) MPEP 2672 states: “The patent owner’s…
Read MoreWhat happens if a patent owner doesn’t file a submission after an ACP?
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…
Read MoreCan 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…
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