What 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…
Read MoreCan a patent owner appeal an Action Closing Prosecution (ACP)?
No, a patent owner cannot appeal an Action Closing Prosecution (ACP) in an inter partes reexamination. The MPEP 2671.02 clearly states: “Although an Action Closing Prosecution (ACP) has many attributes similar to a ‘final rejection’ made in an ex parte reexamination proceeding or in a non-provisional application, it is not a final action, and, as…
Read MoreAre automatic extensions available in inter partes reexamination?
No, automatic extensions are not available in inter partes reexamination proceedings. This differs from ex parte reexamination, where an automatic two-month extension is granted for the first response to a final Office action. The MPEP clarifies: “The automatic extension given in ex parte reexamination does not apply to the first response to an Action Closing…
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…
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