What is an Ex Parte Quayle Action. Episode 72

What is an Ex Parte Quayle Action?

You might receive something from the patent office that looks like a rejection, but it is actually a good thing to get. It is called an Ex Parte Quayle Action. The name comes from a particular case called Ex Parte Quayle, so don’t worry about the unusual name.

The reason why this is good news is that the examiner has reviewed your patent application and found that the claims are allowable. There are no more obviousness or novelty rejections. However, before the examiner will formally allow the patent, some minor issues need to be fixed. These issues are usually related to formatting, typographical errors, or inconsistencies in the drawings.

An Example of an Ex Parte Quayle Action

I recently received an Ex Parte Quayle Action for a design patent application. If you remember from my episode on design patents, drawings can have solid lines or broken lines. Broken lines do not count as part of the claimed design but are helpful in illustrating the invention.

In this particular case, the design involved a blanket with a handle. Since the design did not involve the handle, I drew it using evenly spaced broken lines. Additionally, the blanket had multiple stitched pieces, so I used a different kind of broken line to represent stitching. I also included a description stating that broken lines were not part of the claimed invention.

The examiner agreed that the design was novel and non-obvious, meaning the hard part was done. However, the examiner wanted me to be more detailed in describing the differences between the broken lines. Specifically, I needed to clarify that one type of broken line represented the handle and another type represented stitching.

To respond, I followed the standard amendment rules, using strikethroughs and underlines to indicate changes. I clarified exactly what the different lines were for and submitted my response. A couple of weeks later, I received a Notice of Allowance.

Examiner's Amendments vs. Ex Parte Quayle Actions

Sometimes, if the required correction is a simple typo, the examiner might call you and ask if they can make an Examiner's Amendment. In this case, the examiner can make the correction themselves without requiring a response from you.

However, in cases like the one I just described, where precise wording is needed, the examiner might find it difficult to determine the exact phrasing. Instead of making an amendment on their own, they issue an Ex Parte Quayle Action and leave it to the applicant to make the necessary corrections.

Timeframe for Responding to an Ex Parte Quayle Action

Once you receive an Ex Parte Quayle Action, you have two months to respond without paying any fees. If you need more time, you can extend the deadline by up to four additional months, but you will have to pay extra fees for each additional month, for a total response period of six months.

Are There Any Risks with an Ex Parte Quayle Action?

In theory, it is possible that an Ex Parte Quayle Action could require a correction that cannot be made for some reason. In such a case, you might run into trouble. However, in my experience, the required corrections are usually minor and straightforward. As long as you address the issue properly, you should receive a Notice of Allowance fairly quickly after responding.

Conclusion

An Ex Parte Quayle Action is generally a good thing because it means your claims have been allowed and only minor formalities need to be corrected before your patent is issued. If you receive one, respond within the allowed timeframe to ensure your application proceeds smoothly to allowance.

I’m Adam Diament, and until next time, keep on inventing!