What is the difference between the duty to disclose under 37 CFR 1.56 and the requirements for information under 37 CFR 1.105?

The main differences are:

• Under 37 CFR 1.56, individuals associated with a patent application have a duty to disclose information material to patentability on their own initiative.
• Under 37 CFR 1.105, examiners can require information reasonably necessary for examination from parties identified in 37 CFR 1.56.
• The materiality threshold for 37 CFR 1.56 is higher than the reasonable necessity threshold for 37 CFR 1.105.

As stated in the MPEP: “The criteria for requiring information under 37 CFR 1.56, i.e., materiality to the patentability of claimed subject matter, is substantially higher than the criteria for requiring information under 37 CFR 1.105, i.e., reasonable necessity to the examination of the application.”

To learn more:

• 37 CFR 1.56
• 37 CFR 1.105
• duty to disclose
• requirements for information
• patent examination