1308.03 Quality Review Program for Examined Patent Applications [R-07.2015]
The Office of Patent Quality Assurance administers a program for reviewing the quality of the examination of patent applications. The general purpose of the program is to improve patent quality and increase the likelihood of patents being found to be valid.
The quality review is conducted by Review Quality Assurance Specialists on a randomly selected sample of allowed applications from each examiner. The sample is computer generated under the office-wide computer system (PALM), which selects a predetermined number of allowed applications from each examiner per year for review . A subsample of the selected allowed applications are both reviewed and independently searched by the reviewers. The only applications excluded from the sample are those in which there has been a decision by the Patent Trial and Appeal Board, or by a court.
The Review Quality Assurance Specialist independently reviews each sampled application assigned to his or her docket to determine whether any claims may be unpatentable. The Review Quality Assurance Specialist may consult with, discuss, or review an application with any other reviewer or professional in the examining corps, except the professional who acted on the application. The review will, with or without additional search, provide the examining corps personnel with information which will assist in improving the quality of issued applications. The program shall be used as an educational tool to aid in identifying problem areas in the examining Technology Centers (TCs).
Reviewed applications may be returned to the examining TCs for consideration of the reviewer’s question(s) as to adequacy of the search and/or patentability of a claim(s).
If, during the quality review process, it is determined that one or more claims of a reviewed application are unpatentable, the prosecution of the application will be reopened. The Office action should contain, as an opening, form paragraph 13.04.
¶ 13.04 Reopen Prosecution – After Notice of Allowance
Prosecution on the merits of this application is reopened on claim  considered unpatentable for the reasons indicated below:
- 1. This paragraph should be used when a rejection is made on any previously allowed claim(s) which for one reason or another is considered unpatentable after the Notice of Allowance (PTOL-85) has been mailed.
- 2. Make appropriate rejection(s) as in any other action.
- 3. In bracket 1, identify claim(s) that are considered unpatentable.
- 4. In bracket 2, state all appropriate rejections for each claim considered unpatentable.
If the issue fee has already been paid in the application, the application must be withdrawn from issue by the Office of Data Management, and the action should contain not only the above quoted paragraph, but also form paragraph 13.05.
¶ 13.05 Reopen Prosecution – Vacate Notice of Allowance
Applicant is advised that the Notice of Allowance mailed  is vacated. If the issue fee has already been paid, applicant may request a refund or request that the fee be credited to a deposit account. However, applicant may wait until the application is either found allowable or held abandoned. If allowed, upon receipt of a new Notice of Allowance, applicant may request that the previously submitted issue fee be applied. If abandoned, applicant may request refund or credit to a specified Deposit Account.
- 1. This form paragraph must be used when the prosecution is reopened after the mailing of the Notice of Allowance.
- 2. In bracket 1, insert date of the Notice of Allowance.
Quality Assurance forms and papers are not to be included with Office actions, nor should such forms or papers be retained in the file of any reviewed application whether or not prosecution is to be reopened. The application record should not indicate that a review has been conducted by Quality Assurance.
Whenever an application has been returned to the TC under the Quality Assurance Program, the TC should promptly decide what action is to be taken in the application and inform the Office of Patent Quality Assurance of the nature of that action by use of the appropriate form. If prosecution is to be reopened or other corrective action taken, only the forms should be returned to the Office of Patent Quality Assurance initially, with the application being returned to the Office of Patent Quality Assurance when action is completed. In all other instances, both the application and the forms should be returned to the Office of Patent Quality Assurance.