What 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 considered.”
This means that examiners must give due consideration to any art provided by the applicant in response to their requirement. The level of consideration should be at least equivalent to that given to art submitted through an Information Disclosure Statement (IDS).
If the applicant provides a written list of citations for the submitted art, the examiner must indicate which art has been considered and which has not, similar to the process for an IDS. This can be done using tools like Adobe Acrobat to stamp the document with ‘All References Considered’ along with the receipt date, application number, and art unit.
To learn more:
- Patent examination
- Prior art consideration
- 37 CFR 1.105
- Information Disclosure Statement
- Examiner’s obligation
To learn more: