What 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 ACP which would make at least one claim patentable, except for one or two minor changes needed to obviate a rejection.”
In such cases, rather than sending claims to appeal based on minor issues, the examiner may reopen prosecution and issue a new ACP suggesting the amendment that would make the claims patentable. This approach allows for a more equitable resolution of the reexamination proceeding.
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