Can 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…

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What 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…

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How 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…

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What 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…

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What 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…

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