704.11    What Information May Be Required [R-11.2013]

Information which may be required under 37 CFR 1.105  is that information reasonably necessary to properly examine or treat a matter in a pending or abandoned application filed under 35 U.S.C. 111  (including a reissue application), in a pending or abandoned application that has entered the national stage under 35 U.S.C. 371, in a patent, or in a reexamination proceeding.

There must be a reasonable basis for the information required that would aid in the examination of an application or treatment of some matter. A requirement for information under 37 CFR 1.105  places a substantial burden on the applicant that is to be minimized by clearly focusing the reason for the requirement and the scope of the expected response. Thus, the scope of the requirement should be narrowly defined, and a requirement under 37 CFR 1.105  may only be made when the examiner has a reasonable basis for requiring information.

The terms "factual" and "facts" are included in 37 CFR 1.105  to make it clear that it is facts and factual information, that are known to applicant, or readily obtained after reasonable inquiry by applicant, that are sought, and that requirements under 37 CFR 1.105  are not requesting opinions that may be held or would be required to be formulated by applicant. Where the factual information requested related to the subject application, and details thereof, applicant would be expected to make a reasonable inquiry under the circumstances to find the factual information requested (37 CFR 11.18(b)(2) ). Applicant need not, however, derive or independently discover a fact, such as by experimentation, in response to a requirement for information. The purpose of 37 CFR 1.105  is to improve patent quality, and render better decisions, and not to put applicants in jeopardy of meeting their duties of candor and good faith in their replies to a requirement for information.

  INFORMATION REASONABLY NECESSARY FOR FINDING PRIOR ART

The criteria stated in 37 CFR 1.105  for making a requirement for information is that the information be reasonably necessary to the examination or treatment of a matter in an application. The information required would typically be that necessary for finding prior art or for resolving an issue arising from the results of the search for art or from analysis of the application file. A requirement for information necessary for finding prior art is not a substitute for the examiner performing a search of the relevant prior art; the examiner must make a search of the art according to MPEP §§ 704.01 and 904 – 904.03.

The criteria of reasonable necessity is generally met, e.g., where:

  • (A) the examiner’s search and preliminary analysis demonstrates that the claimed subject matter cannot be adequately searched by class or keyword among patents and typical sources of non-patent literature, or
  • (B) 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.

The first instance generally occurs where the invention as a whole is in a new area of technology which has no patent classification or has a class with few pieces of art that diverge substantially from the nature of the claimed subject matter. In this situation, the applicant is likely to be among the most knowledgeable in the art, as evidenced by the scarcity of art, and requiring the applicant’s information of areas of search is justified by the need for the applicant’s expertise.

The second instance generally occurs where the application file, or other related applications or publications authored by the applicant, suggests the applicant likely has access to information necessary to a more complete understanding of the invention and its context. In this situation, the record suggests that the details of such information may be relevant to the issue of patentability, and thus shows the need for information in addition to that already submitted by the applicant.

704.11(a)    Examples of Information Reasonably Required [R-07.2015]

37 CFR 1.105(a)(1)(i)-(viii)  list specific examples of information that may be reasonably required. Other examples, not meant to be exhaustive, of information that may be reasonably required for examination of an application include:

  • (A) The name and citation of any particularly relevant indexed journal, or treatise.
  • (B) The trade name of any goods or services the claimed subject matter is embodied in.
  • (C) The citation for, the dates initially published and copies of any advertising and promotional literature prepared for any goods or services the claimed subject matter has been embodied in.
  • (D) The citation for and copies of any journal articles describing any goods or services the claimed subject matter has been embodied in.
  • (E) The trade names and providers of any goods or services in competition with the goods or services the claimed subject matter has been embodied in.
  • (F) Any written descriptions or analyses, prepared by any of the inventors or assignees, of goods or services in competition with the goods or services the claimed subject matter has been embodied in.
  • (G) Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee as the current application that disclose similar subject matter that are not otherwise identified in the current application. Regarding the identification of applications filed before June 8, 1995, 35 U.S.C. 122(a)  requires the identified applications to be kept in confidence by the Office and no information concerning the same is to be given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director. See MPEP § 103 and Hyatt v. United States Patent and Trademark Office, No. 1:13-cv-1535 (E.D. Va., May 29, 2014) (2014 WL 2446176).
  • (H) A reply to a matter raised in a protest under 37 CFR 1.291.
  • (I) An explanation of technical material in a publication, such as one of the inventor’s publications.
  • (J) The identification of changes made in a reformatted continuing application filed under 37 CFR 1.53(b).
  • (K) A mark-up for a continuation-in-part application showing the subject matter added where there is an intervening reference.
  • (L) Comments on a new decision by the Federal Circuit that appears on point.
  • (M) The publication date of an undated document mentioned by applicant that may qualify as printed publication prior art (35 U.S.C. 102(a)  or pre-AIA 35 U.S.C. 102(a)  or (b) ).
  • (N) Comments on information of record which raises a question of whether applicant derived the invention from another under 35 U.S.C. 101  and 115, and pre-AIA 35 U.S.C. 102(f).
  • (O) Art related to applicant’s invention, applicant’s disclosure, or the claimed subject matter.
  • (P) Other factual information pertinent to patentability.
  • (Q) The accuracy of the examiner’s stated analysis of such items.
  • (R) Clarification of the correlation and identification of what structure, material, or acts set forth in the specification would be capable of carrying out a function recited in a means or steps plus function claim limitation. If it is not apparent to the examiner where in the specification and drawings there is support for a particular claim limitation reciting a means to accomplish a function, and if an inquiry by the examiner for such support is met by a stated lack of knowledge thereof by the applicant, the examiner could very well conclude that there is no such support and make appropriate rejections under, for example, 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph (written description) and 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph.
  • (S) Interrogatories or Stipulations.
    • (1) Of the common technical features shared among all claims, or admission that certain groups of claims do not share any common technical features,
    • (2) About the support found in the disclosure for means or steps plus function claims (35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, paragraph 6),
    • (3) Of precisely which portion(s) of the disclosure provide the written description and enablement support for specific claim element(s),
    • (4) Of the meaning of claim limitations or terms used in the claims, such as what teachings in the prior art would be covered by particular limitations or terms in a claim and which dictionary definitions would define a particular claim term, particularly where those terms are not used per se in the specification,
    • (5) Of which portions of each claim correspond to any admitted prior art in the specification,
    • (6) Of the specific utility provided by the claimed subject matter on a claim-by-claim basis,
    • (7) As to whether a dependent claim element is known in the prior art based on the examiner having a reasonable basis for believing so,
    • (8) Of support for added limitations in an amended claim,
    • (9) Of facts related to public use or sale situations.
  • (T) Information from the applicant regarding a third party submission under 37 CFR 1.290. In no circumstance may an examiner direct a requirement for information to the third party that submitted the paper under 37 CFR 1.290. See MPEP § 1134.
  • (U) Information from the applicant regarding rescission of a statement under 37 CFR 1.55  or 1.78. See MPEP § 704.14(a) for form paragraph 7.104.02.

704.11(b)    When May a Requirement for Information Be Made [R-08.2012]

A requirement for information under 37 CFR 1.105  is discretionary. A requirement may be made at any time once the necessity for it is recognized and should be made at the earliest opportunity after the necessity is recognized. The optimum time for making a requirement is prior to or with a first action on the merits because the examiner has the maximum opportunity to consider and apply the response. Ordinarily, 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.

Factors to be considered for the appropriateness of a separate requirement for information prior to the first action on the merits include:

  • (A) Whether the claimed subject matter is in a newly established art area without a well-developed prior art resource pool;
  • (B) Whether the applicant submitted an Information Disclosure Statement;
  • (C) Whether the specification’s background description adequately describes the background of the disclosed subject matter;
  • (D) Whether related documents, written by an inventor or an employee of the assignee, which were not submitted, are found during the search or described in the application file;
  • (E) Whether non-patent literature is referred to in the disclosure, but a copy has not been supplied; and
  • (F) Whether the specification’s background of the invention describes information as being known or conventional, which may be considered as an admission of prior art, but such information is unfamiliar to examiner and cannot be found within the application file or from the examiner’s search, and further details of the information would be relevant to the question of patentability.

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. It is rarely appropriate to require information because of a lack of relevant prior art after the first action on the merits.

A requirement for information is not proper when no further action would be taken by the examiner. The reasonable necessity criteria for a requirement for information implies further action by the examiner. This means that actions in which requirements for information necessary for examination are made should generally be a non-final action because the applicant’s reply must be considered and applied as appropriate.

Under limited circumstances, requirements under 37 CFR 1.105  may be made in an application that is issued or abandoned. Such a requirement would normally be made only during part of some ongoing proceeding involving the issued patent or abandoned application. Examples of proceedings when an examiner or other Office employee would issue such a request in an abandoned application include proceedings to revive the abandoned application. Examples of proceedings when an examiner or other Office employee would issue such a request in a patent include proceedings to change inventorship and reexamination proceedings.