An Ex parte Quayle Action is an action where the claims have been allowed but the patent application is objected to for certain technicalities (i.e., minor formalities). The Ex parte Quayle Action officially closes prosecution and requires the applicant to fix the technicalities. A response must be filed within 2 months of the mail date of the office action and may be filed up to 6onths later with the payment of progressively higher monthly extension fees.
Why is it called an Ex parte Quayle Action?
Ex parte Quayle Action is in reference to a lawsuit decided in 1935, namely, Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11 (Comm’r Pat. 1935). When an Ex parte Quayle Action is mailed, this indicates that prosecution on the merits of the patent application has closed. However, the prosecution cannot be fully closed because certain objections to the form of the application have not yet been resolved.
What types of formalities are typically raised in an Ex parte Quayle Action?
Formalities raised in an Ex parte Quayle Action include:
- Inconsistencies in the drawings, specification, and claim language,
- Missing descriptions of the drawings,
- The abstract contains more than 150 words, and
- The drawings are not solid black lines.
How much time do you have to respond to an Ex parte Quayle Action?
A response can be filed two months after the mail date of the Ex parte Quayle Action. You can file the response up to four more months later with the payment of progressively higher extension fees.
In general, you want to file the response as soon as possible since doing so would lead to a notice of allowance and a granted patent sooner than later. After all, the examiner has allowed the application to grant as a patent but for the formalities of the application.
How do you respond to an Ex parte Quayle Action?
A response to the Ex parte Quayle Action is similar to a regular response to an office action. You need to provide a written explanation of what you’re doing and how the documents you submit satisfy the objections made by the examiner.