Responses to 105s

Under 37 CFR 1.105, an Examiner at the US Patent and Trademark Office may require the Applicant submit “such information as may be reasonably necessary to properly examine or treat the matter.”  37 CFR 1.105(a)(1).  USPTO policy encourages making these requests prior to the first action on the merits, such as with a restriction requirement.  MPEP 704.11(b) I.  However, these requests may be made at any time, even after issuance or abandonment.  MPEP 704.11(b) III.

The USPTO treats art submitted in response to a 105 requirement differently than art submitted via an Information Disclosure Statement (IDS).  This different treatment might be confusing, because the art sometimes will be submitted on a Form PTO/SB/08.  MPEP 704.14(d).  It is important to remember that not everything submitted on a Form PTO/SB/08 is an IDS, just as it is important to remember that not every IDS includes a Form PTO/SB/08.

This different treatment can include waiver of the fee and/or certification requirements of IDSes.  MPEP 704.14(d).  The Examiner likely will only inform Applicant of this waiver where the 105 requirement “specifically includes citations to and/or copies of publications.”  MPEP 704.14(a) (¶ 7.123).  However, this waiver should apply in other circumstances as well.

If Applicant fulfills the requirement by submitting information beyond the scope of the requirement, then the fee and/or certification requirements apply to the additional information.  MPEP 704.14(d).  So, an Applicant might prefer submitting only the information specifically requested by the Examiner.  That is, the Applicant might not want to submit additional information to appear helpful.

That being said, a litigator is likely to attack any response to a 105 requirement.  So, rather than address only the Examiner’s specific request, an Applicant might prefer to address the Examiner’s intent.

For example, an Examiner might guess incorrectly the source of the information.  So, an Applicant might want to submit similar information from a different source, rather than indicate the information is not readily available from the requested source.

In this situation, an Applicant probably should not be penalized for complying with the 105 requirement.  So, if the Examiner will not consider the information without a fee and/or certification, then the Applicant might consider filing a petition.  MPEP 704.14(c).

If Modal PLLC can assist you with responding to requirements for information under 37 CFR 1.105, please contact us.

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