Finnegan

March 2012 Issue

Rule Review—Rule 1.105’s Requirements for Information

Rule 1.105 provides the United States Patent and Trademark Office (USPTO) with a mechanism for requesting additional information from the applicant.  Specifically, during examination, the USPTO may request “information as may be reasonably necessary to properly examine” the application.  The Rule also provides examples of the types of information that the examiner may request.  They include the existence of relevant commercial databases; whether a prior art search was made and, if so, what was searched; literature that relates to the claimed invention or was used to draft the application or in the invention process; the improvement and use of the claimed invention; and technical information known to the applicant.

Recently, the USPTO has used Rule 1.105 to request applicants to identify all related patents and copending applications and their specific claims that may present double patenting issues with the claims being examined.  The examiner bases the request on the requirement that the USPTO analyze patentability under 35 U.S.C. 101.  The request, however, may not be proper under Rule 1.105, at least as it relates to specific claims that may present double patenting issues.

According to the Manual of Patent Examining Procedure (MPEP), “requirements under 37 C.F.R. 1.105 are not requesting opinions that may be held or would be required to be formulated by applicant.”  MPEP 704.11 (8th ed. Rev. 6, Sept. 2007).  Moreover, the examiner must determine whether a proper basis exists to enter a double patenting rejection under 35 U.S.C. 101.  See MPEP 804 II (8th ed. Rev. 5, Aug. 2006).  Subpart (a)(3) of Rule 1.105 further indicates that requests for information are for factual information.  For at least these reasons, a request that an applicant provide information on double patenting issues, especially specific claims, may go beyond the scope of Rule 1.105.

While the USPTO may use Rule 1.105 to request a variety of information, the Rule is not without limits.  In responding to a request, an applicant should first determine whether the request is consistent with the language of the Rule and the guidance provided in the MPEP, including whether the information requested is nonfactual and/or an opinion that the USPTO, not the applicant, has the burden of providing.