How should examiners handle information submitted beyond the scope of a 37 CFR 1.105 requirement?

When applicants submit information that goes beyond the scope of a 37 CFR 1.105 requirement, examiners have specific guidelines to follow. The MPEP provides clear instruction: “Information that is beyond the scope of a 37 CFR 1.105 requirement, submitted along with information responding to a requirement under 37 CFR 1.105, need not be considered unless…

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What are the grounds for petitioning a requirement under 37 CFR 1.105?

What are the grounds for petitioning a requirement under 37 CFR 1.105? Petitions to requirements under 37 CFR 1.105 can be filed on the following grounds: Relevance: The requirement is not relevant to the examination of the application. Proprietary information: The required information is trade secret, proprietary, or subject to a protective order. Undue burden:…

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How should a requirement for information be formatted?

According to the MPEP, a requirement for information should be formatted as follows: It should clearly indicate that it’s a requirement under 37 CFR 1.105 It should state the basis for the requirement It should specify what information is being required It should indicate the particular art area involved and the specific claimed subject matter…

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What are form paragraphs in the context of requirements for information?

Form paragraphs are pre-written text segments used by patent examiners to standardize and streamline the process of creating requirements for information. The MPEP provides specific form paragraphs for various aspects of the requirement, including: The heading of the requirement (Form Paragraph 7.105) Specific types of information requests (e.g., Form Paragraphs 7.106 – 7.121) Concluding paragraphs…

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What are examples of information that may be reasonably required during patent examination?

The MPEP provides several examples of information that may be reasonably required during patent examination under 37 CFR 1.105(a)(1)(i)-(viii). Some of these examples include: Names and citations of relevant indexed journals or treatises Trade names of goods or services related to the claimed subject matter Citations and copies of advertising and promotional literature for goods…

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