What factors are considered for making a requirement for information prior to the first action on the merits?
According to MPEP 704.11(b), several factors are considered when determining the appropriateness of a separate requirement for information prior to the first action on the merits. These include:
- Whether the claimed subject matter is in a newly established art area without a well-developed prior art resource pool
- Whether the applicant submitted an Information Disclosure Statement
- Whether the specification’s background description adequately describes the background of the disclosed subject matter
- Whether related documents, written by an inventor or an employee of the assignee, which were not submitted, are found during the search or described in the application file
- Whether non-patent literature is referred to in the disclosure, but a copy has not been supplied
- Whether the specification’s background of the invention describes information as being known or conventional, which may be considered as an admission of prior art, but such information is unfamiliar to examiner and cannot be found within the application file or from the examiner’s search, and further details of the information would be relevant to the question of patentability
These factors help examiners determine if additional information is necessary for a thorough examination of the patent application.
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