Can 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, except where an amendment merely cancels claims, adopts examiner’s suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner.”
This means that while amendments are not automatically allowed after an ACP, they may be considered if they meet certain criteria or if they simplify the issues at hand.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2673 - Examiner Consideration Of Submissions After Acp And Further Action,
Patent Law,
Patent Procedure