What is the purpose of an action closing prosecution (ACP) in ex parte reexamination?
An action closing prosecution (ACP) in ex parte reexamination serves several important purposes: It indicates that the examiner considers the claims to be in condition for rejection or allowance. It provides a final opportunity for the patent owner to respond before a final rejection. It allows the examiner to address all issues and set forth…
Read MoreWhat is the timeframe for patent owner submissions after an Action Closing Prosecution (ACP)?
According to MPEP 2673, the patent owner is given “30 days or one month, whichever is longer, to make the 37 CFR 1.951(a) submission after Action Closing Prosecution (ACP).” If no submission is received after two months from the ACP, the examiner will take up the case for action. The examiner is required to act…
Read MoreHow does an examiner handle new grounds of rejection in inter partes reexamination?
In inter partes reexamination, examiners must carefully consider how to handle new grounds of rejection. According to MPEP 2671.01: “An action will not normally close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.” This means that:…
Read MoreHow are multiple amendments handled after an Action Closing Prosecution (ACP)?
According to MPEP 2673, when multiple amendments are submitted after an Action Closing Prosecution (ACP), only the first amendment will be considered. The MPEP explicitly states: “Where multiple amendments are submitted after the ACP, all amendments except for the first one will be returned without consideration, since they are improper submissions. Thus, if prosecution is…
Read MoreCan a patent owner amend claims after an Action Closing Prosecution (ACP)?
According to MPEP 2673, a patent owner cannot, as a matter of right, amend claims rejected in the ACP, add new claims after an ACP, or reinstate previously canceled claims. The MPEP states: “A showing under 37 CFR 1.116(b) is required and will be evaluated by the examiner for all proposed amendments after the ACP,…
Read MoreHow are affidavits treated after an Action Closing Prosecution (ACP) in inter partes reexamination?
According to MPEP 2673, affidavits submitted after an Action Closing Prosecution (ACP) in inter partes reexamination are treated similarly to amendments submitted after an ACP. The MPEP states: “Affidavits submitted after an ACP are subject to the same treatment as amendments submitted after an ACP. This is analogous to the treatment of affidavits submitted after…
Read MoreWhat is an Action Closing Prosecution (ACP) in inter partes reexamination?
An Action Closing Prosecution (ACP) is a type of Office action in inter partes reexamination that signifies the examiner’s intention to close prosecution. According to MPEP 2671.01, an ACP is typically issued when: The examiner has considered the issues a second or subsequent time The examiner has determined the patentability of all claims However, the…
Read MoreHow does the examiner determine whether to issue an ACP or a final rejection in ex parte reexamination?
The examiner’s decision to issue an Action Closing Prosecution (ACP) or a final rejection in ex parte reexamination depends on specific criteria outlined in the MPEP. According to MPEP 2260: “If the patent owner’s response overcomes all rejections and objections, a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) should be issued. If…
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