§ 1.105 - Request for Information

1. § 1.105 - Request for Information Thurman K. Page Supervisory Patent Examiner Art Unit 1615 (703) 308-2927 thurman.page@uspto.gov

2. § 1.105 - Request for InformationSummary • Examiner or other Office employee may require the submission, • from individuals identified under 37 CFR§ 1.56(c), or any assignee, • information reasonably necessary to properly examine or treat a matter • Where an assignee has asserted its right to prosecute, may also be applied to such assignee. • Any reply that states that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested will be accepted as a complete reply. • The requirement for information may be included in an Office action, or sent separately. • A reply, or a failure to reply, to a requirement for information will be governed by §§ 1.135 and 1.136 (A reply is required within a specified time period, including petitioned extensions of time, or else the application will be abandoned).

3. § 1.105 - Request for InformationDiscretionary Nature - Considerations for Use • A rule 1.105 requirement is a tool used at the examiner’s discretion • Designed to get more relevant information into the record faster using information available to the applicant • A rule 1.105 requirement presents a substantial burden on applicant -Make a requirement only where the need is compelling • Specifically articulate the scope and attributes of the requirement • No fishing expeditions are allowed • Examiner should minimize applicant burden by focusing the requirement • A rule 1.105 requirement should only be made after a thorough search • Not a substitute for or a routine addition to a search • If used, should generally accompany a first action rejection on the merits • Examiner must consider the contents of the applicant’s reply • Recognize that the reply goes on examiner amendment docket • 2 months to respond

4. § 1.105 - Request for InformationExample Requirements • What are some examples of information that can be required? • Commercial Databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention. • Search: Whether a search of the prior art was made, and if so, what was searched. • Related Information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention. • Information Used to Draft Application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application. • Information Used in Invention Process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result. • Improvements: Where the claimed invention is an improvement, identification of what is being improved. • In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.

5. § 1.105 - Request for InformationHow Requirements Are Made • How is the requirement made? • The action will state why the requirement is reasonably necessary • The action will specify the scope of the requirement. • It may be included as an attachment to an Office action on the merits • Where the classified art of the patents and typical non-patent literature is adequately searched for the claimed subject matter • but either the application file or the lack of relevant prior art found in the examiner’s search justifies asking applicant if he/she has information which would be relevant to the patentability determination • It may be made separate from an Office action on the merits • Where the examiner’s preliminary analysis and search demonstrates that the claimed subject matter cannot be adequately searched by class or keyword among patents and typical sources of non-patent literature

6. § 1.105 - Request for InformationWhat Time Periods Are Involved? • How long will the applicant have to respond? • A requirement accompanying an action on the merits will have the same time period as the action on the merits, generally 3 months • A requirement separate from an action on the merits will generally have a 2 month time period • A reply, or a failure to reply, will be governed by §§ 1.135 and 1.136 • Extensions of time are available as with other Office actions • If no reply is madeafter the time period expires, the application becomes abandoned • How does a separate §1.105 requirement affect PTA? • A separate § 1.105 requirement (mailed prior to a first action on the merits) ends the 14 month window for the Office to give a first action • The Office must issue an Office action within 4 months of an applicant's (separate) reply to a §1.105 requirement (in order to avoid PTA).

7. § 1.105 - Request for InformationWhat Is the Required Examiner Response • The examiner must consider the reply, but only to the extent of the §1.105 requirement • If databases to search the NPL, or search terms are suggested: • The examiner must evaluate the search suggestions, use as is deemed appropriate, and record the action taken, or not taken, in the file wrapper search notes. • If art is submitted (with copies): • The examiner must consider the art that meets the scope of the requirement, and must apply it as is appropriate. • The level of consideration required is the same as the level required for an IDS complying with rules § 1.97 and §1.98 (at least cursory consideration of each item). • Examiner may NOT make the next action a final rejection • if the the next action relies on art submitted in response to the § 1.105 requirement and the rejection is not necessitated by amendment

8. § 1.105 - Request for InformationImplementation • What is the plan to ensure proper implementation? • Initial Training • Examiners should narrowly define the scope of a requirement to minimize the burden on an applicant and because overly broad requirements • are difficult for applicants to comply with • create undue burdens on both the applicant and the examiner • create excessive amounts of information • A requirement under 37 CFR § 1.105 should not be a fishing expedition • Supervisory Review • Each Technology Center will provide supervisory review and authorization over all rule § 1.105 requirements prior to mailing • Directors will control the implementation within each Technology Center • Follow-Up Monitoring & Evaluation of Results • Effectiveness of Results • Reasonableness of Requirements • Evaluated within and across Technology Centers.

9. THANK YOU !!! • Thurman K. Page • (703) 308-2927 • thurman.page@uspto.gov