Can an examiner request copies of cited NPL documents not submitted with an IDS?

Can an examiner request copies of cited NPL documents not submitted with an IDS?

Yes, an examiner can request copies of cited Non-Patent Literature (NPL) documents that were not submitted with an Information Disclosure Statement (IDS) under certain circumstances:

• If the NPL citation is incomplete or illegible, the examiner may request a legible copy.
• If the NPL document is not readily available to the examiner, they may request a copy from the applicant.
• The examiner should only request copies of documents that seem particularly relevant to the claimed invention.

According to MPEP 609.05(c): “The examiner may request copies of only those documents cited in the information disclosure statement that are not present in the Office’s files if the examiner believes the documents to be readily available.”

However, it’s important to note that: “The Office should not require copies of U.S. patents and U.S. patent application publications cited in an IDS, unless required by the first sentence of 37 CFR 1.98(d).”

To learn more:

• IDS
• NPL documents
• patent examination
• MPEP