37 CFR § 1.105 — Requirements for information. (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.105 Requirements for information.
This page consolidates MPEP guidance interpreting 37 CFR § 1.105, including 129 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
37 CFR 1.105 establishes the USPTO's protocols for requesting information from patent applicants during examination, defining when and how examiners can seek supplemental details to support a comprehensive patent review.
What this section covers
- The USPTO's authority to request supplemental information during patent application review.
- Defining the scope of information requests related to patent examination and patentability assessment.
Key obligations
- Applicants are not obligated to respond to third-party submissions without an explicit Office request.
- Information requests must be reasonably necessary for comprehensive patent examination.
Conditions and exceptions
- Information requests must have a clear basis in patentability assessment.
Practice notes
- Carefully review and respond to substantive information requests from the USPTO.
- Maintain clear and comprehensive documentation to facilitate potential information requests.
Official MPEP § 1.105 — Requirements for information.
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.105 Requirements for information.
[Editor Note: Some * paragraphs below are not applicable to patent applications filed before Sept. 16, 2012]
- (a)
- (1) In the course of examining or treating a
matter in a pending or abandoned application, in a patent, or
in a reexamination proceeding, including a reexamination
proceeding ordered as a result of a supplemental examination
proceeding, the examiner or other Office employee may require
the submission, from individuals identified under §
1.56(c)
,
or any assignee, of such information as may be reasonably
necessary to properly examine or treat the matter, for
example:
- (i) Commercial databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.
- (ii) Search: Whether a search of the prior art was made, and if so, what was searched.
- (iii) Related information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
- (iv) Information used to draft application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application.
- (v) Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
- (vi) Improvements: Where the claimed invention is an improvement, identification of what is being improved.
- (vii) In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
- (viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.
- (2) Requirements for factual information
known to applicant may be presented in any appropriate
manner, for example:
- (i) A requirement for factual information;
- (ii) Interrogatories in the form of specific questions seeking applicant’s factual knowledge; or
- (iii) Stipulations as to facts with which the applicant may agree or disagree.
- (3) Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.
- (1) In the course of examining or treating a
matter in a pending or abandoned application, in a patent, or
in a reexamination proceeding, including a reexamination
proceeding ordered as a result of a supplemental examination
proceeding, the examiner or other Office employee may require
the submission, from individuals identified under §
1.56(c)
,
or any assignee, of such information as may be reasonably
necessary to properly examine or treat the matter, for
example:
- (b) The requirement for information of paragraph (a)(1) of this section may be included in an Office action, or sent separately.
- (c) A reply, or a failure to reply, to a requirement for information under this section will be governed by §§ 1.135 and 1.136 .
[Removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec.1, 1997; added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(3) revised and paras. (a)(1)(viii) and (a)(4) added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a)(1)(ix) added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (a)(1)(ix) removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); para. (a)(2) removed and paras. (a)(3) and (a)(4) redesignated as (a)(2) and (a)(3), 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (a)(1) introductory text revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[ *The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.105 (pre‑AIA) for the rule otherwise in effect.]
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