What Information May Be Required

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

equested

(

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

or 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.