The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.
The main conditions precedent to the grant of a patent to an applicant are set forth in 35 U.S.C. 101, 102, 103, and 112.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
See MPEP §§ 2104 – 2109 and 2157 for a discussion of inventions that are not considered to be patentable under 35 U.S.C. 101.
[Editor Note: 35 U.S.C. 100(e)-(j) as set forth below are only applicable to patent applications and patents subject to the first inventor to file provisions of the AIA (35 U.S.C. 100 (note) ). See pre-AIA 35 U.S.C. 100(e) for paragraph (e) as applicable to patent applications and patents not subject to the first inventor to file provisions of the AIA.]
When used in this title unless the context otherwise indicates -
· (a) The term "invention" means invention or discovery.
· (b) The term "process" means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
· (c) The terms "United States" and "this country" mean the United States of America, its territories and possessions.
· (d) The word "patentee" includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.
· (e) The term "third-party requester" means a person requesting ex parte reexamination under section 302 who is not the patent owner.
· (f) The term "inventor" means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
· (g) The terms "joint inventor" and "coinventor" mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.
· (h) The term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
· (i)
· (1) The term "effective filing date" for a claimed invention in a patent or application for patent means—
· (A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
· (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).
· (2) The effective filing date for a claimed invention in an application for reissue or reissued patent shall be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
· (j) The term "claimed invention" means the subject matter defined by a claim in a patent or an application for a patent.
[Editor Note: Pre-AIA 35 U.S.C. 100(e) as set forth below is not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). For an application or patent subject to the first inventor to file provisions of the AIA, see 35 U.S.C. 100.]
When used in this title unless the context otherwise indicates -
*****
· (e) The term "third-party requester" means a person requesting ex parte reexamination under section 302 or inter partes reexamination under section 311 who is not the patent owner.
The Office of Patent Application Processing (OPAP) reviews application papers to determine whether a new application is entitled to a filing date. Note that as a result of the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, December 18, 2012, and specifically, the amendments to the patent laws to implement the provisions of the Patent Law Treaty (PLT) in title II of the PLTIA, the filing date requirements for applications filed on or after December 18, 2013 are different from the filing date requirements for applications filed prior to December 18, 2013. Except for design applications, the filing date for nonprovisional applications filed on or after December 18, 2013 is the date on which a specification, with or without claims, is received in the Office. See MPEP § 601.01(a) for additional information. Similarly, provisional applications filed on or after December 18, 2013 may receive a filing date even if the application is filed without drawings. See MPEP § 601.01(b) for additional information. The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as required by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office. See MPEP § 601.01(a). Also, for applications filed on or after December 18, 2013, an application (other than an application for a design patent) is not required to include any drawings to be entitled to a filing date. It should be noted, however, 35 U.S.C. 111(a)(2) continues to require the application to include a drawing as prescribed by 35 U.S.C. 113, which requires a drawing where necessary for the understanding of the subject matter sought to be patented. Therefore, any drawings necessary for the understanding of the invention should be submitted with the application on filing.
If the subject matter of the application admits of illustration by a drawing to facilitate understanding of the invention, including where a drawing is necessary for the understanding of the invention, the Office will continue the practice of requiring a drawing. See MPEP § 608.02, subsection IV. As discussed in MPEP § 608.02, this requirement prior to examination should continue to be extremely rare and limited to the situation in which no examination can be performed due to the lack of an illustration of the invention.
In addition, as provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013 may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application. See MPEP § 601.01(a), subsection III.
The minimal formal requirements resulting from the implementation of the PLTIA and PLT should not be viewed as prescribing a best practice for the preparation and filing of a patent application. The preparation of claims to any claimed invention for which patent protection is desired and the inclusion of such claims with the application on filing will help ensure that the application satisfies the disclosure requirements of 35 U.S.C. 112(a) for any such claimed invention. Similarly, while the absence of any drawing on the filing of an application no longer raises a question as to whether the application is entitled to a filing date, the preparation of drawings for a provisional or nonprovisional application is prudent where a drawing is necessary for the understanding of the subject matter sought to be patented, and inclusion of such drawing(s) with the application on filing will help ensure that the requirements of 35 U.S.C. 113 are satisfied for any such claimed invention.
If an application (other than an application for a design patent) is filed on or after December 18, 2013, without any claims, OPAP will issue a notice giving the applicant a time period within which to submit at least one claim in order to avoid abandonment. An application will not be placed on an examiner’s docket unless and until the application includes a specification including at least one claim.
For applications filed under pre-PLT (AIA) 35 U.S.C. 111 prior to December 18, 2013, a filing date is assigned to a nonprovisional application as of the date a specification containing a description and claim and any necessary drawings are filed in the U.S. Patent and Trademark Office (Office). See pre-PLT (AIA) 37 CFR 1.53(b).
Once OPAP determines that the application is entitled to a filing date, OPAP then determines whether the application as filed is complete, e.g., includes the required fees, the inventor’s oath or declaration, and all pages of the specification and drawings. If the papers filed are not entitled to a filing date, OPAP will send a "Notice of Incomplete Application" informing applicant of the deficiencies; if the application is entitled to a filing date but it is not complete, an OPAP notice (e.g., a "Notice of Omitted Item(s)") will be sent indicating that the application papers so deposited have been accorded a filing date and indicating what papers must be filed to complete the application.
The examiner should be careful to see that the application is complete when taken up for examination. If, for example, pages of the specification or drawings are missing, the examiner should determine whether the application is entitled to the filing date assigned, and what action should be taken. See MPEP §§ 601.01(d) and 601.01(g) for guidance.
When an application is taken up for examination and it is then discovered to be impractical to give a complete action on the merits because of an informal or insufficient disclosure, the following procedure may be followed:
· (A) A reasonable search should be made of the invention so far as it can be understood from the disclosure, objects of invention and claims and any apparently pertinent art cited. In the rare case in which the disclosure is so incomprehensible as to preclude a reasonable search, the Office action should clearly inform applicant that no search was made;
· (B) Any form that lists informalities and any additional formal requirements to be made should be included in the first Office action (see MPEP § 707.07(a));
· (C) A requirement should be made that the specification be revised to conform to idiomatic English and United States patent practice;
· (D) The claims should be rejected as failing to define the invention in the manner required by 35 U.S.C. 112 if they are informal. A blanket rejection is usually sufficient.
The examiner should attempt to point out the points of informality in the specification and claims. The burden is on the applicant to revise the application to render it in proper form for a complete examination.
If a number of obviously informal claims are filed in an application, such claims should be treated as being a single claim for fee and examination purposes.
It is to applicant’s advantage to file the application with an adequate disclosure and with claims which conform to the U.S. Patent and Trademark Office usages and requirements. This should be done whenever possible. If, however, due to the pressure of a Convention deadline or other reasons, this is not possible, applicants are urged to submit promptly, preferably within 3 months after filing, a preliminary amendment which corrects the obvious informalities. The informalities should be corrected to the extent that the disclosure is readily understood and the claims to be initially examined are in proper form, particularly as to dependency, and otherwise clearly define the invention. "New matter" must be excluded from these amendments since preliminary amendments filed after the filing date of the application do not enjoy original disclosure status. See MPEP § 608.04(b).
Whenever, upon examination, it is found that the terms or phrases or modes of characterization used to describe the invention are not sufficiently consonant with the art to which the invention pertains, or with which it is most nearly connected, to enable the examiner to make the examination specified in 37 CFR 1.104, the examiner should make a reasonable search of the invention so far as it can be understood from the disclosure. The action of the examiner may be limited to a citation of what appears to be the most pertinent prior art found and a request that applicant correlate the terminology of the specification with art-accepted terminology before further action is made.
Use form paragraph 7.01 where the terminology is such that a proper search cannot be made.
A preliminary examination of this application reveals that it includes terminology which is so different from that which is generally accepted in the art to which this invention pertains that a proper search of the prior art cannot be made. For example: [1]
Applicant is required to provide a clarification of these matters or correlation with art-accepted terminology so that a proper comparison with the prior art can be made. Applicant should be careful not to introduce any new matter into the disclosure (i.e., matter which is not supported by the disclosure as originally filed).
A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.
1. Use this or form paragraph 7.02 when a proper search cannot be made. However, see MPEP § 702.01 which requires a reasonable search.
2. In bracket 1, fill in an appropriate indication of the terminology, properties, units of data, etc. that are the problem as well as the pages of the specification involved.
3. For the procedure to be followed when the drawing is not acceptable, see MPEP §§ 608.02(a) and 608.02(b).
Use form paragraph 7.02 where the application is so incomprehensible that a reasonable search cannot be made.
The disclosure is objected to under 37 CFR 1.71, as being so incomprehensible as to preclude a reasonable search of the prior art by the examiner. For example, the following items are not understood: [1]
Applicant is required to submit an amendment which clarifies the disclosure so that the examiner may make a proper comparison of the invention with the prior art.
Applicant should be careful not to introduce any new matter into the disclosure (i.e., matter which is not supported by the disclosure as originally filed).
A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.
1. Use this form paragraph when a search cannot be made.
2. In bracket 1, indicate the page numbers and features which are not understood.
3. See form paragraphs 6.28 and 6.30 for improper idiomatic English.
4. Use form paragraphs 7.31.01 – 7.31.04, as appropriate, for a rejection of claims (when necessary) based on the deficiencies set forth in this form paragraph.
For the procedure to be followed when the drawing is not acceptable, see MPEP §§ 608.02(a) and 608.02(b).
After reading the specification and claims, the examiner searches the prior art. The subject of searching is more fully treated in MPEP Chapter 900. See especially MPEP §§ 904 through 904.03. The invention should be thoroughly understood before a search is undertaken. However, informal cases, or those which can only be imperfectly understood when they come up for action in their regular turn are also given a search, in order to avoid piecemeal prosecution.
When an examiner is assigned to act on an application which has received one or more actions by some other examiner, the examiner should review the previous search to ensure it is thorough and complete. See MPEP § 904.02. In general the second examiner should not take an entirely new approach to the application or attempt to reorient the point of view of the previous examiner, or make a new search in the mere hope of finding something. See MPEP § 719.05.
· (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.
· (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.
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.")
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.
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.
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 the inventor 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 the claimed 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.
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.
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.
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.
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.
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. All replies for a request for information should be checked for completeness. Any incomplete reply can be completed within the original time period set including any extensions. Supplemental replies filed after the expiration of the original period for reply including any extensions of time must comply with all other rules for submissions of information.
The duty of candor and good faith under 37 CFR 1.56 applies to the applicant’s reply to a requirement for information under 37 CFR 1.105, and requires that the applicant reply to a requirement under 37 CFR 1.105 with information reasonably and readily available.
37 CFR 1.56 requires parties identified in 37 CFR 1.56(c) to disclose to the Office information material to the patentability of the claimed subject matter. This threshold is substantially higher than that for requiring information under 37 CFR 1.105, which is reasonable necessity to the examination of the application. See, e.g., Star Fruits S.N.C. v. United States, 280 F.Supp.2d 512, 515-16 (E.D. Va 2003)("Beyond that which a patent applicant is duty-bound to disclose pursuant to 37 CFR 1.56, an examiner may require the production of ‘such information as may be reasonably necessary to properly examine or treat the matter.’")
In contrast with the applicant’s duty to disclose on his or her own initiative information material to patentability under 37 CFR 1.56, the Office has the authority to require information reasonably necessary to the examination or treatment of a matter in an application. Such information may not be considered material to patentability by applicant, hence applicant would not be required to provide the information under 37 CFR 1.56. The information is instead reasonably necessary to determine the state of the art, the context in which the invention is practiced, the directions in which the relevant art are advancing, the similarity between the claimed subject matter and other art worked on by the applicants and their assignees or to otherwise proceed in the examination and treatment of matters in an application.
Similar to 37 CFR 1.56, applicant is required by 37 CFR 1.105 to submit information already known, but there is no requirement to search for information that is unknown. Unlike 37 CFR 1.56, applicant is required by 37 CFR 1.105 to submit information that may not be material to patentability in itself, but that is necessary to obtain a complete record from which a determination of patentability may be determined.
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.
There is no need for applicants to distinguish between whether the required information is unknown or is not readily available. Thus, if information remains unknown after a reasonable inquiry is made, applicant may simply reply that the requested information is either unknown or is not readily available rather than be required to make a categorical position either that the information is unknown to the applicant, or that the information is not readily available to the applicant.
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.
Depending on the facts surrounding the requirement and the reply, a follow up requirement may be made where both reasonable and warranted.
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. See 37 CFR 1.135(c) and MPEP § 714.03. Where the reply is a bona fide reply, form paragraph 7.95 may be used. Note that a 37 CFR 1.105 requirement, even absent an action on the merits, is an Office action.
The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91.
A reply, or a failure to reply, to a requirement for information under 37 CFR 1.105 will be governed by 37 CFR 1.135 and 1.136. See MPEP § 710 et seq.
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 in accordance with 37 CFR 1.136(a).
