The number 3 most cited case in design patent prosecutions is Ex Parte Quayle, 25 USPQ 74 (1935).  This should not be surprising since the case is cited on the USPTO’s Office Action Summary form. But ignoring the form, Ex Parte Quayle still is the number 3 most cited case since January 2021 in design patent prosecutions with at least one non-final rejection. According to Design Patent ProSearch, it has been cited in at least 5,200 prosecution histories as of August 23, 2024.

Ex Parte Quayle is an important decision related to the procedural aspects of patent prosecution. It clarified the procedures and standards for examining patent applications, particularly addressing the role of the patent examiner when only formal objections remain. It allows the United States Patent and Trademark Office (USPTO) to issue a notice of allowance for a patent application while deferring the resolution of certain minor issues until after the notice is issued. This principle ensures that minor formalities do not delay the issuance of a patent.

The decision established that if the only remaining objections to a patent application are purely formal (such as issues with grammar, punctuation, minor drawing errors and inconsistencies, or formatting), the examiner should not refuse to allow the application. Instead, the application should be allowed to proceed to issuance, with the applicant required to make the necessary formal corrections. Ex Parte Quayle distinguishes between substantive rejections, which concern the patentability of the design itself, and formal objections, which pertain to the presentation of the application. Substantive rejections related to design patents include those directed toward ornamentality, novelty, nonobviousness, enablement, and definiteness. See MPEP 1504.

Prior to the Quayle decision, there was ambiguity about how examiners should proceed when an application was substantively acceptable but contained formal defects. The decision provided clear guidance, helping to streamline the patent examination process.

The core issue in Ex Parte Quayle was whether a patent examiner should reject an application outright if the only remaining objections were formal, such as errors in the application’s structure or format, rather than substantive issues related to the patentability of the invention. The Board of Appeals ruled that when an application is ready for allowance except for formal matters, the examiner should not reject the application on those grounds alone. Instead, the examiner should issue what is now known as a “Quayle action.”

A “Quayle action” refers to a notice sent by the examiner to the applicant, indicating that the application is ready to be allowed, provided that the applicant makes the necessary formal corrections. These formal matters typically include (1) correcting typographical errors such as spelling, punctuation, or grammatical errors in the patent specification, (2) ensuring that the application adheres to the required format, including margins, line spacing, and section headings, (3) ensuring all drawings and figures meet the USPTO’s standards for clarity and completeness, and (4) correcting errors in the specification language including written descriptions of the drawing figures and feature statements. Once the applicant makes these formal corrections, the application can proceed to issuance without further examination on substantive grounds. As stated in MPEP  1504, “[w]hen an examiner determines that the claim in a design application is patentable under all statutory requirements, but formal matters still need to be addressed and corrected prior to allowance, an Ex parte Quayle action will be sent to applicant indicating allowability of the claim and identifying the necessary corrections.” Id.

Although Ex Parte Quayle expedited the patenting process, it also created potential problems in the design patent context where the precision of drawings is more important than in a utility patent application. Sometimes there is disagreement between the applicant and examiner regarding the relative importance of a drawing objection or rejection. When an examiner issues a Quayle Action, prosecution on the merits is closed and the options for amendments, including drawing amendments, are restricted. One such restriction is that an applicant may no longer amend the drawings in a way that broadens the scope of the claim. If an applicant desires to file an amendment that exceeds the restrictions imposed upon amendments filed after a Quayle Action is issued, the applicant may be required to file a continued prosecution application (CPA) and to pay additional fees.

A Quayle Action also includes a shortened statutory period for reply, further expediting the patenting process (although the period of reply may be expended by paying additional fees). If an additional rejection is given after a reply to a Quayle action, the indication of allowability can be withdrawn, ensuring any new grounds for rejection are addressed without unnecessary delays.

In sum, Ex Parte Quayle enhanced the efficiency of the patent process by allowing the USPTO to handle patent applications that are substantively allowable but have minor formal issues needing correction before a patent can be granted. It streamlined the process by focusing the applicant’s attention on specific formal corrections, reducing the time and effort required for further substantive examination. Overall, Ex Parte Quayle plays a crucial role in making the patent examination process more efficient, fair, and predictable for both the USPTO and patent applicants.