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

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.

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.