Dispensing with the Formalities: Ex Parte Quayle Actions
Checking my email after work one day, I was greeted with some unfortunate news: the application I was prosecuting had received yet another Office action. Frustrated, I couldn’t resist skimming the substance of the rejection. After all, like any patent practitioner, I thought my arguments were pretty irrefutable. The news only got worse… or so it appeared. The Office action was something called an “Ex Parte Quayle action.” Having never received one of these actions, I started mentally preparing myself to pull out the MPEP and research some arcane rejection.
To my surprise, I didn’t find myself knee-deep in case law the following day. Ex Parte Quayle actions, while somewhat inconvenient, are far from insurmountable. In short, an Ex Parte Quayle action or “Quayle action” is issued when an application has objections remaining as to formal matters, but is otherwise allowable. Accordingly, the mailing of these actions closes prosecution on the merits of the application and sets a shortened statutory period of two months to overcome the objections (with extensions available for up to four additional months).
What types of formal matters might arise to trigger a Quayle action? Two broad categories exist, and each are subject to unique considerations.
- Drawing, specification, and claim language objections. Such objections are often overcome with simple amendments. However, avoiding such rejections at the last stage of prosecution may be preempted by holistic and detail-oriented patent application drafting at the outset. The last thing any client wants is a two-month delay and extra prosecution fees over a misplaced lead line. By focusing on quality over quantity during the drafting process, a patent practitioner can ensure that a Notice of Allowance is received as promptly and inexpensively as possible.Of course, these objections are not always avoidable, as Examiners may have unpredictable standards of allowance or may misuse a Quayle action when an Examiner’s amendment would suffice. For example, an Examiner may improperly issue a Quayle action to correct antecedent basis or a minor typographical error.
- Claims directed to
non-elected subject matter have not been canceled. If a requirement for restriction/election has
resulted in non-elected claims being withdrawn, the patent practitioner must
cancel the withdrawn claims prior to allowance.
Though this appears to be an avoidable outcome (as the claims may simply
be canceled upon election), strategic advantages exist to retaining withdrawn
claims through prosecution. Expensive
prosecution of child filings may be avoided by pursuing a winnable petition
while having allowable subject matter in your back pocket. However, as discussed in , such a course of action may provide an additional opportunity
for the Examiner to prolong prosecution with further rejections.