What are the limitations on patent owner submissions after an ACP?
Patent owner submissions after an Action Closing Prosecution (ACP) in inter partes reexamination are subject to the following limitations:
- Comments must be limited to issues raised in the ACP
- Proposed amendments are subject to the criteria of 37 CFR 1.116
- Only one submission is allowed under 37 CFR 1.951(a)
MPEP 2672 states: “The patent owner’s submission of comments under 37 CFR 1.951(a) must be limited to the issues raised in the ACP. If the submission addresses issues not already raised in the ACP, then the comments will be returned as improper.”
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2672 - Patent Owner Comments/Amendment After Acp And Third Party Requester Responsive Comments,
Patent Law,
Patent Procedure