What is the purpose of requiring information under 37 CFR 1.105?
The purpose of requiring information under 37 CFR 1.105 is to obtain a complete record for determining patentability. The MPEP explains: “Information required by the examiner pursuant to 37 CFR 1.105 would not necessarily be considered material to patentability in itself, but would be necessary to obtain a complete record from which a determination of…
Read MoreWhat 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…
Read MoreCan an examiner require information submitted to other government agencies?
Yes, an examiner can require information submitted to other government agencies under certain circumstances. The MPEP states: “This requirement could include statements made or information submitted to other Government agencies such as the FDA.” For example, when examining a claim related to a drug manufacturing process filed more than a year after FDA approval, an…
Read MoreWhat is the difference between the duty to disclose under 37 CFR 1.56 and the requirements for information under 37 CFR 1.105?
The main differences are: Under 37 CFR 1.56, individuals associated with a patent application have a duty to disclose information material to patentability on their own initiative. Under 37 CFR 1.105, examiners can require information reasonably necessary for examination from parties identified in 37 CFR 1.56. The materiality threshold for 37 CFR 1.56 is higher…
Read MoreWho can be required to submit information under 37 CFR 1.105?
According to the MPEP, information can be required from parties identified in 37 CFR 1.56. Specifically, the MPEP states: “Under 37 CFR 1.105, an examiner or other Office employee is authorized to require, from parties identified in 37 CFR 1.56, information reasonably necessary to examine or treat a matter in an application.” The parties identified…
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