When May a Requirement for Information Be Made

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

upplied; 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

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.