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,…
Read MoreWhat is an Ex parte Quayle action in design patent examination?
An Ex parte Quayle action is a type of Office action issued when the examiner determines that the claim in a design application is patentable, but there are still formal matters that need to be addressed before allowance. The MPEP 1504 states: “When an examiner determines that the claim in a design application is patentable…
Read MoreWhat are formal matters in the context of an Ex parte Quayle action?
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…
Read MoreAre additional fees required when responding to an Ex parte Quayle action?
When responding to an Ex parte Quayle action, additional fees may be required depending on the nature of the response and any time extensions needed. The MPEP 714.14 references MPEP § 607 for additional fee requirements: See MPEP § 607 for additional fee requirements. Typically, if the response is filed within the initial two-month period,…
Read MoreUnder what circumstances will an application not be withdrawn from issue for an amendment entry?
An application will not be withdrawn from issue for the entry of an amendment in certain circumstances. The MPEP specifies: “The application will not be withdrawn from issue for the entry of an amendment that would reopen the prosecution if the Office action next preceding the notice of allowance closed the application to further amendment.”…
Read MoreHow are amendments treated after an Ex parte Quayle action?
After an Ex parte Quayle action, amendments are treated similarly to amendments after final rejection. MPEP 714.14 states: Amendments touching the merits are treated in a manner similar to amendments after final rejection, though the prosecution may be continued as to the formal matters. This means that while amendments addressing the formal matters are generally…
Read MoreWhat is an Ex parte Quayle action?
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…
Read MoreWhat is the time period for replying to an Ex parte Quayle Office action?
An Ex parte Quayle Office action is issued when an application is in condition for allowance, except for matters of form. According to MPEP 710.02(b), When an application is in condition for allowance, except as to matters of form, such as correction of the specification, a new oath, etc., the application will be considered special…
Read MoreWhat is the reply period for an Ex parte Quayle action?
The reply period for an Ex parte Quayle action is typically shorter than a regular Office action. According to the form paragraph provided in MPEP 714.14: A shortened statutory period for reply to this action is set to expire TWO (2) MONTHS from the mailing date of this letter. However, it’s important to note that…
Read MoreCan prosecution be reopened after an Ex parte Quayle action?
Generally, prosecution on the merits is closed after an Ex parte Quayle action is issued. The MPEP 714.14 states: Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935). However, this closure primarily relates to substantive examination. The prosecution may continue…
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