What is the scope of the USPTO’s authority to require information under 37 CFR 1.105?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The United States Patent and Trademark Office (USPTO) has broad authority to require information under 37 CFR 1.105. The MPEP cites a court case that clarifies this authority:

“See, e.g., Star Fruits S.N.C. v. United States, 280 F.Supp.2d 512, 515-16 (E.D. Va 2003)(“Beyond that which a patent applicant is duty-bound to disclose pursuant to 37 CFR 1.56, an examiner may require the production of ‘such information as may be reasonably necessary to properly examine or treat the matter.’)”

This means that the USPTO’s authority extends beyond what an applicant is required to disclose under the duty of disclosure. Examiners can request any information they deem reasonably necessary for proper examination, even if it wouldn’t typically be considered material to patentability.