What happens if required information under 37 CFR 1.105 is not known or readily available?
What happens if required information under 37 CFR 1.105 is not known or readily available? If the information required under 37 CFR 1.105 is not known to any individual designated in 37 CFR 1.56(c) and is not readily available to the applicant, a petition can be filed. The MPEP 704.14(c) states: If information required to…
Read MoreHow 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…
Read MoreHow is an incomplete reply to a 37 CFR 1.105 requirement handled?
An incomplete reply to a 37 CFR 1.105 requirement in a pending application or reexamination proceeding is handled in the same manner as an amendment not fully responsive to a non-final Office action. The MPEP states: “An incomplete reply to a 37 CFR 1.105 requirement in a pending application or reexamination proceeding is handled in…
Read MoreWhat 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:…
Read MoreHow should a patent examiner format a requirement for information?
A patent examiner should format a requirement for information according to the guidelines provided in MPEP 704.14(a). The format should include: Clear statement: Explicitly state that the requirement is being made under 37 CFR 1.105 Time period: Specify a time period for reply, typically between one and three months Warning: Include a warning that failure…
Read MoreHow 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…
Read MoreWhat 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…
Read MoreCan a follow-up requirement be issued after a reply to a 37 CFR 1.105 requirement?
Yes, a follow-up requirement can be issued after a reply to a 37 CFR 1.105 requirement, but only when it is both reasonable and warranted based on the specific circumstances of the case. MPEP 704.12(b) states: “Depending on the facts surrounding the requirement and the reply, a follow up requirement may be made where both…
Read MoreWhat 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…
Read MoreWhat is the examiner’s responsibility regarding art submitted in response to a 37 CFR 1.105 requirement?
Examiners have a specific responsibility to consider art submitted in response to a 37 CFR 1.105 requirement. The MPEP states: “Art that is submitted in response to a 37 CFR 1.105 requirement must be considered, at least to the extent that art submitted with an Information Disclosure Statement under 37 CFR 1.97 and 1.98 is…
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