Question 1

What is the process for handling submitted materials when a reissue application is being allowed?

Accepted Answer

When a reissue application containing materials submitted under MPEP § 724.02 is being allowed, the following process occurs:

Before mailing a notice of allowability, the examiner reviews the reissue application file for any unacted-upon petitions to expunge.
The examiner or appropriate Office official determines whether the submitted information is material to patentability.
If found material, the petition to expunge is denied, and the information becomes a permanent part of the public file.
If not material, the petition to expunge is granted, and the information is expunged.
If no petition to expunge is filed before the notice of allowability is mailed, the materials become part of the public file under 37 CFR 1.11(b).

The MPEP states: "If the reissue application is being allowed, prior to the mailing of a notice of allowability, the examiner will review the reissue application file and determine if a petition to expunge is in the reissue application file but not acted upon. The examiner, or other appropriate Office official who is responsible for considering the information, will make a determination as to whether or not any portion or all of the information submitted is material to patentability."

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Question 2

What is the procedure for providing copies of references at the time of allowance?

Accepted Answer

The MPEP 707.05(a) outlines the procedure for providing copies of references at the time of allowance:

Copies of foreign patent documents and nonpatent literature (NPL) which are cited by the examiner at the time of allowance will be furnished to applicant with the Office action and be retained in the file wrapper. This will apply to all allowance actions, including first action allowances and Ex Parte Quayle actions.

This ensures that applicants receive copies of newly cited foreign patents and NPL at the crucial stage of allowance, regardless of the type of allowance action.

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Question 3

What is the date of abandonment for a utility or plant application?

Accepted Answer

What is the date of abandonment for a utility or plant application?

For a utility or plant application, the date of abandonment is determined as follows:

If all claims are rejected, the application becomes abandoned on the date after the period for reply expires.
If some claims are allowed, the application becomes abandoned on the date after the shortened statutory period expires.

As stated in MPEP 711.04(a): 'The date of abandonment of an application is the date on which the reply, appeal brief, or notice of appeal is due but not filed.' This applies to both situations where all claims are rejected or some claims are allowed.

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patent abandonment
utility application
plant application
rejection
allowance

Question 4

What is an Ex parte Quayle action?

Accepted Answer

An Ex parte Quayle action is a type of Office action issued when an application is in condition for allowance except for formal matters. As stated in MPEP 714.14:

Under the decision in Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11; 453 OG 213 (Comm'r Pat. 1935), after all claims in an application have been allowed the prosecution of the application on the merits is closed even though there may be outstanding formal objections which preclude fully closing the prosecution.

This means that while the substantive examination is complete, there are still minor formal issues that need to be addressed before the application can be allowed.

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Question 5

What happens when a Secrecy Order patent application is in condition for allowance?

Accepted Answer

As explained in MPEP 130, when a patent application under a Secrecy Order is in condition for allowance, "a notice of allowability (Form D-10) is issued, thus closing the prosecution." See 37 CFR 5.3(c).

After the notice of allowability is issued, any amendments received are not entered or responded to until the Secrecy Order is rescinded. Once the Secrecy Order is rescinded, amendments will be entered if they are free from objections, otherwise they will be denied entry.

Question 6

What happens if a petition to expunge information is not filed before the application is allowed?

Accepted Answer

What happens if a petition to expunge information is not filed before the application is allowed?

If a petition to expunge information is not filed before the application is allowed, the opportunity to expunge information may be significantly limited. According to MPEP 724.05:

'A petition to expunge information will not be considered if filed after the application has been allowed, except where the information to be expunged has been submitted after allowance and is not substantive information.'

This means that once an application is allowed, the ability to expunge information becomes more restricted. Petitions filed after allowance will only be considered for non-substantive information submitted after the allowance. It's crucial for applicants to file any necessary petitions to expunge before the application reaches the allowance stage to ensure the best chance of success.

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Question 7

What are formal matters in the context of an Ex parte Quayle action?

Accepted Answer

Formal matters in the context of an Ex parte Quayle action refer to non-substantive issues that need to be addressed before an application can be allowed. These are typically minor objections that do not affect the patentability of the claims. The MPEP 714.14 states:

...after all claims in an application have been allowed the prosecution of the application on the merits is closed even though there may be outstanding formal objections which preclude fully closing the prosecution.

Examples of formal matters might include issues with the specification format, drawing objections, or minor claim language clarifications that don't affect the scope. The examiner is required to explain these formal matters in the Ex parte Quayle action, as indicated by the form paragraph note: "Explain the formal matters which must be corrected in bracket 1."

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Question 8

Can an examiner enter an amendment after final rejection that places the application in condition for allowance?

Accepted Answer

Can an examiner enter an amendment after final rejection that places the application in condition for allowance?

Yes, an examiner can enter an amendment after final rejection if it places the application in condition for allowance. The MPEP 714.12 explicitly states:

"An amendment filed after final rejection will be entered only if it places the application either in condition for allowance or in better form for appeal."

If the examiner determines that the proposed amendment resolves all outstanding issues and makes the claims allowable, they will enter the amendment and proceed with issuing a Notice of Allowance. This practice promotes efficiency in patent examination by allowing examiners to quickly conclude prosecution when an applicant's amendment overcomes all rejections.

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Question 9

Can a patent application be rejected after it has been allowed?

Accepted Answer

Yes, a patent application can be rejected after it has been allowed. According to MPEP 706.05, rejection after allowance is possible. The section states:

"See MPEP § 1308.01 for a rejection based on a reference after allowance."

This means that even after an application has been allowed, new information or references may come to light that could lead to a rejection. It's important for applicants and patent attorneys to be aware that allowance doesn't guarantee final approval.

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MPEP 706.05

Patent Law FAQ

Here’s the complete FAQ:

MPEP 130-Examination of Secrecy Order Cases (1)

What happens when a Secrecy Order patent application is in condition for allowance?

Patent Law (1)

What happens when a Secrecy Order patent application is in condition for allowance?