How should examiners handle information submitted beyond the scope of a 37 CFR 1.105 requirement?
When applicants submit information that goes beyond the scope of a 37 CFR 1.105 requirement, examiners have specific guidelines to follow. The MPEP provides clear instruction:
“Information that is beyond the scope of a 37 CFR 1.105 requirement, submitted along with information responding to a requirement under 37 CFR 1.105, need not be considered unless the submission of such art conforms to the provisions of 37 CFR 1.97 and 1.98, and MPEP § 609.”
This means that examiners are not obligated to consider information that exceeds the scope of their original requirement unless it is submitted in accordance with the rules for Information Disclosure Statements (IDS). However, if the additional information is properly submitted as an IDS, it must be considered according to those provisions.
It’s important to note that the scope of a 37 CFR 1.105 requirement is determined by the plain meaning of the text of the requirement. Therefore, examiners should be precise in specifying the scope of information they require to avoid confusion.
To learn more:
- Patent examination
- 37 CFR 1.105
- Information submission
- Scope of requirement
- Information Disclosure Statement
To learn more: