What is the examiner’s obligation after receiving an applicant’s reply to a 37 CFR 1.105 requirement?
The examiner has a clear obligation to consider the information submitted with the applicant’s reply and apply it appropriately. This obligation stems from the examiner’s assertion that the information is necessary for examination. Specifically, the MPEP states: “The examiner must consider the information submitted with the applicant’s reply and apply the information as the examiner…
Read MoreCan an examiner deny considering information submitted in reply to a 37 CFR 1.105 requirement?
No, an examiner cannot deny considering information that is submitted in reply to a 37 CFR 1.105 requirement, as long as it is within the scope of that requirement. The MPEP is explicit on this point: “It is never appropriate to deny considering information that is submitted in reply to, and is within the scope…
Read MoreWhat is the examiner’s obligation after receiving a reply to a requirement for information?
After receiving a reply to a requirement for information under 37 CFR 1.105, the examiner has several obligations: Consider the information submitted in the applicant’s reply Apply the information as deemed appropriate to the examination For search-related information, indicate which areas were used and which were not in performing a search For answers to queries,…
Read MoreWhat are the criteria for making a requirement for information under 37 CFR 1.105?
The MPEP outlines specific criteria for making a requirement for information under 37 CFR 1.105: Reasonable Necessity: The information must be reasonably necessary for the examination or treatment of a matter in the application. Factual Information: The requirement should seek facts and factual information known to the applicant or readily obtained after reasonable inquiry. Minimized…
Read MoreWhat constitutes a complete reply to a 37 CFR 1.105 requirement?
A complete reply to a 37 CFR 1.105 requirement involves responding to each enumerated request for information by either: Providing the required information, or Stating that the information is unknown and/or not readily available to the requested party or parties. As stated in MPEP 704.12(b): “A complete reply to a 37 CFR 1.105 requirement is…
Read MoreHow can an applicant challenge a requirement under 37 CFR 1.105?
An applicant can challenge a requirement under 37 CFR 1.105 by submitting a petition under 37 CFR 1.181. The MPEP states: “Applicants who seek to have a requirement under 37 CFR 1.105 withdrawn or modified, or who seek to have information submitted under 37 CFR 1.105 considered, may submit a petition under 37 CFR 1.181…
Read MoreWho has the authority to consider petitions regarding 37 CFR 1.105 requirements?
Petitions regarding 37 CFR 1.105 requirements are considered by the Director of the Technology Center that issued the requirement. The MPEP specifies: “Applicants who seek to have a requirement under 37 CFR 1.105 withdrawn or modified, or who seek to have information submitted under 37 CFR 1.105 considered, may submit a petition under 37 CFR…
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…
Read MoreWhen can a requirement for information be made during patent examination?
A requirement for information under 37 CFR 1.105 can be made at various stages of the patent examination process. According to MPEP 704.11(b): “A requirement for information under 37 CFR 1.105 is discretionary. A requirement may be made at any time once the necessity for it is recognized and should be made at the earliest…
Read MoreHow does the USPTO handle petitions challenging the appropriateness of 37 CFR 1.105 requirements?
How does the USPTO handle petitions challenging the appropriateness of 37 CFR 1.105 requirements? The USPTO handles petitions challenging the appropriateness of 37 CFR 1.105 requirements based on the stage of prosecution. According to MPEP 704.14(c): If the petition argues that the requirement is not appropriate for the stage of prosecution that the application was…
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