(a)(1) In the course of examining or treating a matter in a pending or abandoned application, in a patent, or in a reexamination proceeding, including a reexamination proceeding ordered as a result of a supplemental examination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
(i) 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.
(ii) Search: Whether a search of the prior art was made, and if so, what was searched.
(iii) 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.
(iv) 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.
(v) 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.
(vi) Improvements: Where the claimed invention is an improvement, identification of what is being improved.
(vii) 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.
(viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner's stated interpretation of such items.
(2) Requirements for factual information known to applicant may be presented in any appropriate manner, for example:
(i) A requirement for factual information;
(ii) Interrogatories in the form of specific questions seeking applicant's factual knowledge; or
(iii) Stipulations as to facts with which the applicant may agree or disagree.
(3) Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.
(b) The requirement for information of paragraph (a)(1) of this section may be included in an Office action, or sent separately.
(c) A reply, or a failure to reply, to a requirement for information under this section will be governed by §§ 1.135 and 1.136.
[65 FR 54671, Sept. 8, 2000, as amended at 69 FR 56542, Sept. 21, 2004; 72 FR 46841, Aug. 21, 2007; 74 FR 52690, Oct. 14, 2009; 77 FR 48821, Aug. 14, 2012; 80 FR 17963, Apr. 2, 2015]
Notes of Decisions
Star Fruits s.n.c. v. United States, 393 F.3d 1277 (Fed. Cir. 2005).
· cites it 24× “Because the United States Patent and Trademark Office ("the Office") did not act unlawfully when it deemed Star Fruits's patent application abandoned for failing to respond to a Requirement For Information under 37 C.F.R. § 1.105 , we affirm the judgment of the district court.”
Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009).
· cites it 4× “" 37 C.F.R. § 1.105 ; see also Star Fruits, 393 F.”
Inre: Packard, 751 F.3d 1307 (Fed. Cir. 2014).
· cites it 2× “2005) (upholding examiner demand, under 37 C.F.R. § 1.105 , for “information that the applicant is in the best position to most cheaply provide”); see also, USPTO, Notice of Public Hearing and Request for Comments on Issues Related to the Identifi- cation of Prior Art During the…”
In Re Enhanced Sec. Rsch., LLC, 739 F.3d 1347 (Fed. Cir. 2014).
· cites it 4× “105 of the PTO regulations permits an ex- aminer to request more information from a patentee 8 in 8 37 C.F.R. § 1.105 permits the examiner to request such information from: (1) Each inventor named in the application; (2) Each attorney or agent who prepares or prose- cutes the…”
Goldstein v. Moatz, 364 F.3d 205 (4th Cir. 2004).
· cites it 2× “In assessing the available safeguards protecting the recipient of an RFI, we are naturally inclined to turn to the regulation authorizing issuance of RFIs, found at 37 C.F.R. § 1.105 . That regulation, titled “Requirements for information,” provides that, “[i]n the course of…”
Hyatt v. United States Pat. & Trademark Off., 146 F. Supp. 3d 771 (E.D. Va. 2015).
“” 37 C.F.R. § 1.105 (a)(1). In sum, patent examination is typically a back-and-forth, iterative process resulting ultimately in the patent examiner’s allowing or rejecting one or more of the claims in the patent application.”
Star Fruits v. United States, 393 F.3d 1277 (Fed. Cir. 2005).
· cites it 4× “A subsequent Office Action included a "Requirement For Information Under 37 C.F.R. 1.105." Specifically, the Office sought "any information available regarding the sale or other public distribution of the claimed plant variety anywhere in the world" and "copies of the…”
Goldstein v. Moatz, 445 F.3d 747 (4th Cir. 2006).
“” 37 C.F.R. § 1.105 (a)(1). 2 . In his Amended Complaint, Goldstein sued Harry I.”
Star Fruits S.N.C. v. United States, 280 F. Supp. 2d 512 (E.D. Va. 2003).
· cites it 4× “1 On February 28, 2001, the United States Patent and Trademark Office (“PTO”) issued a “non-final” Office Action, which included a Requirement for Information Under 37 C.F.R. § 1.105 . Specifically, to determine whether existing publications served as a statutory bar to…”
Hyatt v. United States Pat. & Trademark Off., 110 F. Supp. 3d 644 (E.D. Va. 2015).
“” 37 C.F.R. § 1.105 (a)(1). In sum, patent examination is typically a back-and-forth, iterative process resulting ultimately in the patent examiner allowing or rejecting one or more of the claims in the patent application.”
— 37 C.F.R. § 1.105(a)(1) — 2 cases
Star Fruits s.n.c. v. United States, 393 F.3d 1277 (Fed. Cir. 2005).
“Because the United States Patent and Trademark Office ("the Office") did not act unlawfully when it deemed Star Fruits's patent application abandoned for failing to respond to a Requirement For Information under 37 C.F.R. § 1.105 , we affirm the judgment of the district court.”
Star Fruits v. United States, 393 F.3d 1277 (Fed. Cir. 2005).
“A subsequent Office Action included a "Requirement For Information Under 37 C.F.R. 1.105." Specifically, the Office sought "any information available regarding the sale or other public distribution of the claimed plant variety anywhere in the world" and "copies of the…”
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