Can an examiner deny considering information submitted in reply to a 37 CFR 1.105 requirement?
No, an examiner cannot deny considering information that is submitted in reply to a 37 CFR 1.105 requirement, as long as it is within the scope of that requirement. The MPEP is explicit on this point:
“It is never appropriate to deny considering information that is submitted in reply to, and is within the scope of, a requirement under 37 CFR 1.105.”
This means that if an examiner has requested specific information under 37 CFR 1.105, and the applicant provides that information in their reply, the examiner must consider it. This obligation is fundamental to the examination process and ensures that all relevant information is taken into account.
However, it’s important to note that information submitted beyond the scope of the requirement may not need to be considered unless it conforms to the provisions for Information Disclosure Statements under 37 CFR 1.97 and 1.98.
To learn more:
- Patent examination
- 37 CFR 1.105
- Information consideration
- Examiner’s obligation
- Scope of requirement
To learn more: