When is it appropriate to make a requirement for information during patent examination?

According to the MPEP, a requirement for information under 37 CFR 1.105 is discretionary and can be made at any time once the necessity is recognized. However, the optimal timing is described as follows:

The optimum time for making a requirement is prior to or with a first action on the merits because the examiner has the maximum opportunity to consider and apply the response.

The MPEP outlines several scenarios when it may be appropriate to make a requirement for information:

• Prior to the first action on the merits: This is suitable when the claimed subject matter cannot be adequately searched by class or keyword, especially in areas of emerging technology with minimal prior art.
• With the first action on the merits: This can be combined with at least one rejection if the application file or lack of relevant prior art justifies asking for more information.
• After the first action on the merits: This may be appropriate when the application file justifies asking for information relevant to patentability determination.

The MPEP advises against making a requirement for information with or after a final rejection, except under limited circumstances.

To learn more:

• 37 CFR 1.105
• information requirements
• patent examination
• timing of requirements

To learn more:

• 37 CFR 1.105