How 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 to the change in the examiner’s position, because the patent owner’s amendment rights are limited after ACP, see MPEP § 2673.”
To preserve the patent owner’s full amendment rights, examiners typically reopen prosecution by issuing a non-ACP action, which is an Office action prior to the ACP stage. This approach ensures that the patent owner has the opportunity to adequately address any changes in the examiner’s position through amendments.
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