Can an examiner make an examiner’s amendment in a merged reissue/inter partes reexamination proceeding?

An examiner can make an examiner’s amendment in a merged reissue/inter partes reexamination proceeding, but only in very limited circumstances. The MPEP states: “The only times that an examiner’s amendment can be made in conjunction with a Notice of Allowability are where the patent owner authorization need not be obtained.” These limited circumstances include: Formal…

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What does it mean for an application to be “substantially allowable”?

An application is considered “substantially allowable” when it is in condition for allowance, except for minor formal matters. According to MPEP § 1301, “When an application is in condition for allowance, except as to matters of form, the application will be considered special and prompt action taken to require correction of formal matters.” This means…

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What are “matters of form” in a patent application?

“Matters of form” in a patent application refer to minor, non-substantive issues that need to be corrected before a patent can be granted. These are typically formal requirements that do not affect the core inventive concept or patentability of the invention. According to MPEP § 1301, when an application is “in condition for allowance, except…

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How 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…

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