Requirements for Information

37 CFR 1.105  Requirements for information.

(a)

(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.

wn 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

identified under

37 CFR 1.56(c)

, the submission of such information as may be

reasonably necessary to properly examine or treat a matter in a pending or abandoned

application filed under

35 U.S.C. 111

, 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. 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

, 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. 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.

The authority for the Office to make such requirements arises from the

statutory requirements of examination pursuant to

35 U.S.C. 131

and

132

. An examiner

or other Office employee may make a requirement for information reasonably necessary to

the examination or treatment of a matter in accordance with the policies and practices

set forth by the Director(s) of the Technology Center or other administrative unit to

which that examiner or other Office employee reports. See

Star Fruits S.N.C. v.

United States

, 61393 F.3d 1277, 1283, 73 USPQ2d 1409, 1414 (Fed. Cir. 2005)

(“Star Fruits’ argument fails to come to grips with the real issue in this case, which

is whether the Office can use section 1.105 to compel disclosure of information that the

examiner deems pertinent to patentability when the applicant has a contrary view of the

applicable law. We answer this question in the affirmative.”)