MPEP § 704.12(b) — What Constitutes a Complete Reply (Annotated Rules)
§704.12(b) What Constitutes a Complete Reply
This page consolidates and annotates all enforceable requirements under MPEP § 704.12(b), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
What Constitutes a Complete Reply
This section addresses What Constitutes a Complete Reply. Primary authority: 37 CFR 1.105. Contains: 3 requirements.
Key Rules
Requirement for Information (37 CFR 1.105)
A complete reply to a 37 CFR 1.105 requirement is a reply to each enumerated requirement for information giving either the information required or a statement that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested. There is no requirement for the applicant to show that the required information was not, in fact, readily attainable, but applicant is required to make a good faith attempt to obtain the information and to make a reasonable inquiry once the information is requested.
A complete reply to a 37 CFR 1.105 requirement is a reply to each enumerated requirement for information giving either the information required or a statement that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested. There is no requirement for the applicant to show that the required information was not, in fact, readily attainable, but applicant is required to make a good faith attempt to obtain the information and to make a reasonable inquiry once the information is requested.
PTAB Contested Case Procedures
A reply stating that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested will generally be sufficient unless, for example, it is clear the applicant did not understand the requirement, or the reply was ambiguous and a more specific answer is possible.
Citations
| Primary topic | Citation |
|---|---|
| Requirement for Information (37 CFR 1.105) | 37 CFR § 1.105 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 704.12(b) — What Constitutes a Complete Reply
Source: USPTO704.12(b) What Constitutes a Complete Reply [R-08.2012]
A complete reply to a 37 CFR 1.105 requirement is a reply to each enumerated requirement for information giving either the information required or a statement that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested. There is no requirement for the applicant to show that the required information was not, in fact, readily attainable, but applicant is required to make a good faith attempt to obtain the information and to make a reasonable inquiry once the information is requested.
There is no need for applicants to distinguish between whether the required information is unknown or is not readily available. Thus, if information remains unknown after a reasonable inquiry is made, applicant may simply reply that the requested information is either unknown or is not readily available rather than be required to make a categorical position either that the information is unknown to the applicant, or that the information is not readily available to the applicant.
A reply stating that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested will generally be sufficient unless, for example, it is clear the applicant did not understand the requirement, or the reply was ambiguous and a more specific answer is possible.
Depending on the facts surrounding the requirement and the reply, a follow up requirement may be made where both reasonable and warranted.