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…
Read MoreWhat 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…
Read MoreWhat is the significance of a Quayle action in patent examination?
A Quayle action is a special type of office action in patent examination that requires the signature of a primary examiner, Technology Center Director, or practice specialist, even when an examiner has partial signatory authority. As mentioned in MPEP 1005, Quayle actions are listed among the exceptions to partial signatory authority. A Quayle action, detailed…
Read MoreWhat 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…
Read MoreWhat is an example of a formal objection in patent examination?
The MPEP provides a clear example of a formal objection in patent examination: An example of a matter of form as to which objection is made is dependency of a claim on a rejected claim, if the dependent claim is otherwise allowable. This example illustrates that objections typically relate to the form or structure of…
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 MoreCan formal objections and rejections be combined in a single appeal to the PTAB?
No, formal objections and rejections should not be combined in a single appeal to the Patent Trial and Appeal Board (PTAB). The MPEP is clear on this point: These formal matters should not be combined in appeals to the Board. This guideline is based on the different nature and review processes for objections and rejections:…
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 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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