How are amendments handled in applications with closed prosecution on the merits?
In applications where prosecution on the merits is closed (e.g., after an Ex Parte Quayle action), amendments are handled as follows:
- Amendments curing noted formal defects are entered.
- New claims or amendments requiring further search or consideration are not entered.
According to MPEP 714.20: “In an application in which prosecution on the merits is closed, i.e., after the issuance of an Ex Parte Quayle action, where an amendment is presented curing the noted formal defect and adding one or more claims some or all of which are in the opinion of the examiner not patentable, or will require a further search, the amendment in such a case will be entered only as to the formal matter. Applicant has no right to have new claims considered or entered at this point in the prosecution.”
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