Updated: May 26
What is Ex parte Quayle Action? Before understanding "Ex parte Quayle Action", let us first understand when and where it is required. After filing the patent application, the application is examined by the examiner and it comes under "Chapter 0700 - Examination of Applications".
If examiner finds that the application need some amendments, the examiner gives some time to amend the application, and detail for these comes under "714 Amendments, Applicant’s Action"
I. When Applicant May Amend
The applicant may amend:
(A) before or after the first Office action and also after the second Office actions as specified in 37 CFR 1.112;
(B) after final rejection, if the amendment meets the criteria of 37 CFR 1.116;
(D) when and as specifically required by the examiner.
Amendments in provisional applications are not normally made. If an amendment is made to a provisional application, however, it must comply with the provisions of 37 CFR 1.121.
Any amendments to a provisional application will be placed in the provisional application file, but may not be entered.
II. Manner of Making Amendments Under 37 CFR 1.121
The amendment has to be done in the following manner:
A. Amendment Sections
B. Amendments to the Specification
C. Amendments to the Claims
D. Amendments to the Drawing
E. Examiner’s Amendments
F. Non-Compliant Amendments
G. Entry of Amendments, Directions for, Defective
H. Amendment of Amendments
"If the examiner decides to allow all claims at this stage, the communication sent to the applicant is referred to as a first action on the merits allowance. It is also possible for the examiner to issue an office action (called an Ex parte Quayle) indicating that although the subject matter of the examined claims are allowable, certain formal requirements still remain and must be addressed."
F. Non-Compliant Amendments
All amendments filed on or after July 30, 2003 must comply with 37 CFR 1.121. The Office will notify applicant by a Notice of Non-Compliant Amendment, that the amendment fails to comply with the requirements of 37 CFR 1.121 and identify:
(1) which section of the amendment is non-compliant (e.g., the amendments to the claims section);
(2) items that are required for compliance (e.g., a claim listing in compliance with 37 CFR 1.121(c)); and
(3) the reasons why the section of the amendment fails to comply with 37 CFR 1.121 (e.g., the status identifiers are missing).
The type of amendment will determine whether applicant will be given a period of time in which to comply with the rule and whether applicant’s reply to a notice should consist of the corrected section of the amendment, instead of the entire corrected amendment.
If the noncompliant amendment is:
(A) A preliminary amendmentfiled after the filing date of the application
(B) A preliminary amendment that is present on the filing date of the application
(C) A non-final amendment
(D) An after-final amendment
(E) A supplemental amendment filed when there is no suspension of action
(F) A supplemental amendment filed within a suspension period
(G) An amendment filed in response to a Quayle action
(H) An after-allowance amendment
The conculsion is that an"Ex parte Quayle Action" is a Notice of Non-Compliant Office Action, which sets a time period of two months for reply. Extensions of time are available under 37 CFR 1.136(a). Failure to reply to this notice will result in abandonment of the application. Applicant’s reply is required to include the corrected section of the amendment.
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