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 This includes situations where a ground of rejection is withdrawn or an additional claim is found patentable.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examiner making a new ground of rejection, if a new finding of patentability is made (i.e., a ground of rejection is withdrawn or an additional claim is indicated as patentable), prosecution need not be reopened.”
The third party requester can address new findings of patentability at the appeal stage, similar to how they would address findings of patentability made earlier in the reexamination proceeding.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2673.01 - Reopening Prosecution After Acp,
Patent Law,
Patent Procedure