What type of information can an examiner require under 37 CFR 1.105?

Under 37 CFR 1.105, an examiner can require information that is reasonably necessary to examine or treat a matter in an application. This includes:

• Information relevant to examination either procedurally or substantively
• Information beyond what is defined as material to patentability under 37 CFR 1.56
• Information that may not be directly useful to support a rejection or conclusively decide patentability

The MPEP cites the Star Fruits S.N.C. v. United States case, which states: “‘such information as may be reasonably necessary to properly examine or treat the matter,’ 37 C.F.R. 1.105(a)(1), contemplates information relevant to examination either procedurally or substantively. It includes a zone of information beyond that defined by section 1.56 as material to patentability, and beyond that which is directly useful to support a rejection or conclusively decide the issue of patentability.”

To learn more:

• 37 CFR 1.105
• requirements for information
• patent examination
• examiner authority