This section covers the requirements for information including what information may be required, when the requirement may be made, time periods for reply, and more.
704.10 Requirements for Information
MPEP SECTION SUMMARY
37 C.F.R. 1.105 covering the requirements for information is briefly discussed in this section. This rule states the different types and sources of information available to the applicant or registered practitioner that may need to be sent to the PTO during the examination of the application.
This rule states the different types and sources of information available to the applicant or registered practitioner that may need to be sent to the PTO during the examination of the application.
(1) In the course of examining or treating a matter in a pending or abandoned application, in a patent, or in a reexamination proceeding, including a reexamination proceeding ordered as a result of a supplemental examination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
(i) Commercial databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.
(ii) Search: Whether a search of the prior art was made, and if so, what was searched.
(iii) Related information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
(iv) Information used to draft application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application.
(v) Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
(vi) Improvements: Where the claimed invention is an improvement, identification of what is being improved.
(vii) In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
(viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.
(2) Requirements for factual information known to applicant may be presented in any appropriate manner, for example:
(i) A requirement for factual information;
(ii) Interrogatories in the form of specific questions seeking applicant’s factual knowledge; or
(iii) Stipulations as to facts with which the applicant may agree or disagree.
(3) Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.
(b) The requirement for information of paragraph (a)(1) of this section may be included in an Office action, or sent separately.
(c) A reply, or a failure to reply, to a requirement for information under this section will be governed by §§ 1.135 and 1.136.
An examiner or other Office employee may require from individuals, the submission of such information as may be reasonably necessary to properly examine or treat a matter in a pending or abandoned application, in a pending or abandoned application that has entered the national stage, in a patent, or in a reexamination proceeding.
The scope of 37 CFR 1.105 is extended to any assignee or anyone to whom there is an obligation to assign the application because the information required may be known to some members of the assignee or obligated assignee even if not known by the inventors.
704.11 What Information May Be Required
MPEP SECTION SUMMARY
This section discusses what information may be required in a requirement for information.
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704.11
An attorney of record may have to submit information in reply to an Office action, a reissue application, or a reexamination proceeding; this information includes:
information used in the inventive process, such as:
a copy of non-patent literature,
a publication application, or
a patent used in the inventive process
the publication date of an undated document mentioned by the applicant which may qualify as a prior art publication
comments on a new decision by the Federal Circuit that is relevant to the examination of the application
704.11(b) When May a Requirement for Information Be Made
MPEP SECTION SUMMARY
This section covers when a requirement for information may be made. It includes a brief discussion on the following time periods; prior to the first action on the merits, with the first action on the merits, and after the first action on the merits.
A requirement for information under 37 CFR 1.105 is discretionary.
a request for information should not be made with or after a final rejection.
I. PRIOR TO THE FIRST ACTION ON THE MERITS
It may be appropriate to make a requirement for information prior to the first action on the merits, such as with a restriction requirement, when the examiner’s search and preliminary analysis demonstrates that the claimed subject matter cannot be adequately searched by class or keyword among patents or in areas of emerging technology where the Office has minimal prior art.
II. WITH THE FIRST ACTION ON THE MERITS
A requirement for information may be combined with a first action on the merits that includes at least one rejection, if, for example, either the application file or the lack of relevant prior art found in the examiner’s search justifies asking the applicant if he or she has information that would be relevant to the patentability determination.
It is not appropriate to make a requirement for information based on a lack of relevant prior art with a first action on the merits allowance or Ex parte Quayle action.
III. AFTER THE FIRST ACTION ON THE MERITS
A requirement for information made after the first action on the merits may be appropriate when the application file justifies asking the applicant if he or she has information that would be relevant to the patentability determination.
A requirement for information is not proper when no further action would be taken by the examiner.
704.12 Replies to a Requirement for Information
MPEP SECTION SUMMARY
Replies to requirements for information must be complete and filed within the time period set including any extensions. Failure to reply within the time period set will result in the abandonment of the application.
704.12(a) Relationship of Requirement for Information to Duty of Disclosure
MPEP SECTION SUMMARY
The duty of candor and good faith applies to the applicant’s reply to a requirement for information, and requires that the applicant reply to a requirement under 37 CFR 1.105 with information reasonably and readily available.
704.12(b) What Constitutes a Complete Reply
MPEP SECTION SUMMARY
This section covers exactly what counts as a complete reply to a requirement for information. Essentially, a complete reply must reply to each enumerated requirement for information (whether the information as requested is given or a statement that the information required to be submitted is not available).
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704.12(b)
A complete reply to a 37 CFR 1.105 requirement is a reply to each enumerated requirement for information giving either the information required or a statement that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested.
There is no requirement for the applicant to show that the required information was not, in fact, readily attainable, but applicant is required to make a good faith attempt to obtain the information and to make a reasonable inquiry once the information is requested.
A reply stating that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested will generally be sufficient unless, for example, it is clear the applicant did not understand the requirement, or the reply was ambiguous and a more specific answer is possible.
704.12(c) Treatment of an Incomplete Reply
MPEP SECTION SUMMARY
An incomplete reply to a 37 CFR 1.105 requirement in a pending application or reexamination proceeding is handled in the same manner as an amendment not fully responsive to a non-final Office action. Note that a 37 CFR 1.105 requirement, even absent an action on the merits, is an Office action.
704.13 Time Periods for Reply
MPEP SECTION SUMMARY
Requirements for information under 37 CFR 1.105 made without an action on the merits should set a shortened statutory period of two months for reply. Applicant may extend the time period for reply up to six months.
Requirements sent with an Office action on the merits, and not as a separate Office action, will be given the same period for reply as the action on the merits.
Requirements for information under 37 CFR 1.105 made without an action on the merits should set a shortened statutory period of two months for reply.
Applicant may extend the time period for reply up to six months.
Requirements sent with an Office action on the merits, and not as a separate Office action, will be given the same period for reply as the action on the merits.
704.14 Making a Requirement for Information
MPEP SECTION SUMMARY
A requirement for information under 37 CFR 1.105 should be narrowly specified and limited in scope.
704.14(a) Format of the Requirement
MPEP SECTION SUMMARY
The requirement must clearly indicate that a requirement under 37 CFR 1.105 is being made, the basis for the requirement, and what information is being required.
A requirement for information under 37 CFR 1.105 is generally prepared as a separate document that may be attached to an Office action on the merits or mailed as a standalone action.
The requirement must clearly indicate that a requirement under 37 CFR 1.105 is being made, the basis for the requirement, and what information is being required.
A requirement for information under 37 CFR 1.105 is generally prepared as a separate document that may be attached to an Office action on the merits or mailed as a stand alone action.
704.14(c) Petitions to Requirements Under 37 CFR 1.105
MPEP SECTION SUMMARY
Applicants who seek to have a requirement under 37 CFR 1.105 withdrawn or modified, or who seek to have information submitted under 37 CFR 1.105 considered, may submit a petition under 37 CFR 1.181.
A petition is not a reply to a 37 CFR 1.105 requirement. The time period for the applicant to reply to the 37 CFR 1.105 requirement continues to run, even where a petition has been submitted.
Applicants who seek to have a requirement under 37 CFR 1.105 withdrawn or modified, or who seek to have information submitted under 37 CFR 1.105 considered, may submit a petition under 37 CFR 1.181 to the Director of the Technology Center in which the requirement was issued.
A petition is not a reply to a 37 CFR 1.105 requirement.
The time period for the applicant to reply to the 37 CFR 1.105 requirement continues to run, even where a petition has been submitted.
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