When is an Action Closing Prosecution (ACP) issued in inter partes reexamination?
An Action Closing Prosecution (ACP) is typically issued at specific points in the inter partes reexamination process. According to MPEP 2671.02: 1. When all claims are found patentable in the first action: “When all claims are found patentable in the first action, the examiner will, at that point, issue an ACP, since the patent owner…
Read MoreWhat 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 MoreHow are requests for extensions of time after Action Closing Prosecution (ACP) handled?
Requests for extensions of time after Action Closing Prosecution (ACP) in inter partes reexamination are handled with caution, especially when related to submitting affidavits. Key points include: Granting an extension does not guarantee acceptance of the affidavit. Examiners may question why the affidavit was not presented earlier. Insufficient showings may result in denial of affidavit…
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 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 purpose of the PTOL-2065 form in inter partes reexamination?
The PTOL-2065 form is used for the “Action Closing Prosecution” in inter partes reexamination proceedings. As stated in MPEP 2696, this form is associated with “37 CFR 1.949”. The Action Closing Prosecution is a significant step in the reexamination process, indicating that the examiner believes the prosecution of the reexamination proceeding is drawing to a…
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 MoreWhat 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: 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…
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 is the process when a patent owner fails to respond to an Action Closing Prosecution (ACP) in inter partes reexamination?
When a patent owner fails to respond to an Action Closing Prosecution (ACP) in inter partes reexamination, the consequences are different from those of failing to respond to other Office actions. According to MPEP 2666.10: “A response to an ACP is not required. Where the patent owner does not respond to an ACP, the Office…
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