# Presentation: 673688

## § 1.105 - Request for Information

**Thurman K. Page**
- Supervisory Patent Examiner
- Art Unit 1615
- (703) 308-2927
- thurman.page@uspto.gov

## § 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).

## § 1.105 - Request for Information Discretionary 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

## § 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.

## § 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 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

## § 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).

## § 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

## § 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.

## THANK YOU !!!

**Thurman K. Page**
- (703) 308-2927
- thurman.page@uspto.gov