A requirement for information under 37 CFR 1.105 is discretionary. A requirement may be made at any time once the necessity for it is recognized and should be made at the earliest opportunity after the necessity is recognized. 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. Ordinarily, a request for information should not be made with or after a final rejection.
I. PRIOR TO THE FIRST ACTION ON THE MERITS
It may be appropriate to make a requirement for information prior to the first action on the merits, such as with a restriction requirement, when the examiner’s search and preliminary analysis demonstrates that the claimed subject matter cannot be adequately searched by class or keyword among patents or in areas of emerging technology where the Office has minimal prior art.
Factors to be considered for the appropriateness of a separate requirement for information prior to the first action on the merits include:
- (A) Whether the claimed subject matter is in a newly established art area without a well-developed prior art resource pool;
- (B) Whether the applicant submitted an Information Disclosure Statement;
- (C) Whether the specification’s background description adequately describes the background of the disclosed subject matter;
- (D) Whether related documents, written by an inventor or an employee of the assignee, which were not submitted, are found during the search or described in the application file;
- (E) Whether non-patent literature is referred to in the disclosure, but a copy has not been supplied; and
- (F) Whether the specification’s background of the invention describes information as being known or conventional, which may be considered as an admission of prior art, but such information is unfamiliar to examiner and cannot be found within the application file or from the examiner’s search, and further details of the information would be relevant to the question of patentability.
II. WITH THE FIRST ACTION ON THE MERITS
A requirement for information may be combined with a first action on the merits that includes at least one rejection, if, for example, either the application file or the lack of relevant prior art found in the examiner’s search justifies asking the applicant if he or she has information that would be relevant to the patentability determination.
It is not appropriate to make a requirement for information based on a lack of relevant prior art with a first action on the merits allowance or Ex parte Quayle action.
III. AFTER THE FIRST ACTION ON THE MERITS
A requirement for information made after the first action on the merits may be appropriate when the application file justifies asking the applicant if he or she has information that would be relevant to the patentability determination. It is rarely appropriate to require information because of a lack of relevant prior art after the first action on the merits.
A requirement for information is not proper when no further action would be taken by the examiner. The reasonable necessity criteria for a requirement for information implies further action by the examiner. This means that actions in which requirements for information necessary for examination are made should generally be a non-final action because the applicant’s reply must be considered and applied as appropriate.
Under limited circumstances, requirements under 37 CFR 1.105 may be made in an application that is issued or abandoned. Such a requirement would normally be made only during part of some ongoing proceeding involving the issued patent or abandoned application. Examples of proceedings when an examiner or other Office employee would issue such a request in an abandoned application include proceedings to revive the abandoned application. Examples of proceedings when an examiner or other Office employee would issue such a request in a patent include proceedings to change inventorship and reexamination proceedings.