1
1.105 - Request for Information

• Thurman K. Page
• Supervisory Patent Examiner
• Art Unit 1615
• [phone]
• thurman.page_at_uspto.gov

2
1.105 - Request for Information Summary

• 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 Information Discretionary
Nature - Considerations for Use

• A rule 1.105 requirement is a tool used at the
  examiners 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
  applicants reply
• Recognize that the reply goes on examiner
  amendment docket
• 2 months to respond

4
1.105 - Request for Information Example
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 Information How
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 examiners 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 examiners 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 Information What 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 made after 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 Information What 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 Information Implementation

• 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
• [phone]
• thurman.page_at_uspto.gov