Is reopening prosecution necessary when a new finding of patentability is made after ACP?
No, reopening prosecution is not necessary when a new finding of patentability is made after Action Closing Prosecution (ACP). This includes situations where a ground of rejection is withdrawn or an additional claim is found patentable. MPEP 2673.01 states: “As opposed to the examiner making a new ground of rejection, if a new finding of…
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 MoreWhen is reopening prosecution mandatory after Action Closing Prosecution (ACP) in inter partes reexamination?
Reopening prosecution is mandatory when the examiner decides to modify their position after receiving a submission from the patent owner pursuant to 37 CFR 1.951(a) and (b). This is necessary to give the patent owner an opportunity to address any changes adverse to their position. According to MPEP 2673.01: “The examiner should reopen prosecution where…
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 MoreWhy can’t examiners use interviews or examiner’s amendments to resolve minor issues after ACP in inter partes reexamination?
In inter partes reexamination, examiners cannot use interviews or examiner’s amendments to resolve minor issues after Action Closing Prosecution (ACP) due to the presence of the third party requester and procedural restrictions. MPEP 2673.01 explains: “The examiner cannot telephone the owner to obtain the minor change(s) and then issue a RAN because interviews are not…
Read MoreWhat happens after the patent owner responds and third party comments in an inter partes reexamination?
After the patent owner responds and any third party comments are received, the patent under reexamination is reconsidered. The MPEP states: “The patent owner and the third party requester will be notified as to any claims rejected, any claims found patentable and any objections or requirements made.” This process continues until the examiner determines the…
Read MoreHow does reopening prosecution after ACP affect patent owner’s amendment rights?
Reopening prosecution after Action Closing Prosecution (ACP) can significantly affect a patent owner’s amendment rights. If prosecution is reopened at the ACP stage, the patent owner’s ability to amend claims is limited. MPEP 2673.01 states: “If prosecution were reopened at the ACP stage, the patent owner loses rights as to amending the claims in response…
Read MoreHow does an examiner handle withdrawals of rejections in an Action Closing Prosecution (ACP)?
When an examiner withdraws a rejection in an Action Closing Prosecution (ACP) during inter partes reexamination, they must handle it carefully. According to MPEP 2671.02: For rejections initiated by the examiner: “Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the ACP as a…
Read MoreWhat are the circumstances for discretionary reopening of prosecution after ACP?
Examiners are encouraged to be liberal in reopening prosecution after Action Closing Prosecution (ACP) when the equities of the situation make it appropriate. This is because patent owners cannot continue the proceeding through other means such as refiling or requesting continued examination. MPEP 2673.01 provides an example: “Patent owner might submit an amendment after the…
Read MoreWhat 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…
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