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 MoreHow does MPEP 704 address the examiner’s authority to require information?
MPEP 704 addresses the examiner’s authority to require information from applicants under 37 CFR 1.105. This authority is crucial for ensuring a thorough examination of patent applications. According to MPEP 704: An examiner or other Office employee may require the submission, from individuals identified under 37 CFR 1.56(c), or any assignee, of such information as…
Read MoreWhat are the limitations on an examiner’s authority to require information under MPEP 704?
While MPEP 704 grants examiners significant authority to request information, there are important limitations to this power. These limitations ensure that information requests are reasonable and relevant to the examination process. According to MPEP 704: The examiner should consider the burden on the applicant in requiring the information. The examiner should be reasonable in the…
Read MoreHow does MPEP 704 address the applicant’s duty to respond to information requirements?
MPEP 704 outlines the applicant’s duty to respond to information requirements issued by examiners. This duty is an essential part of the patent examination process and is based on 37 CFR 1.105. According to MPEP 704: The applicant is required to reply to a requirement for information made by the examiner. A complete reply to…
Read MoreWhat information can be required under 37 CFR 1.105?
Under 37 CFR 1.105, the examiner can require information that is reasonably necessary to properly examine or treat a matter in a pending or abandoned application. This includes: Applications filed under 35 U.S.C. 111 (including reissue applications) Applications that have entered the national stage under 35 U.S.C. 371 Patents Reexamination proceedings The MPEP states, There…
Read MoreHow should an applicant respond to a requirement for information?
When responding to a requirement for information under 37 CFR 1.105, an applicant should: Provide the requested information within the specified time period Ensure the response is made with candor and good faith as required by 37 CFR 1.56 If an item of information is unknown or cannot be readily obtained, state this in the…
Read MoreHow should an applicant respond to a requirement for information?
How should an applicant respond to a requirement for information? When responding to a requirement for information, applicants should follow these guidelines based on MPEP 704.14: Be timely: Respond within the set time limit, typically one month or 30 days. Be complete: Address all points raised in the requirement. Be accurate: Provide truthful and precise…
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