MPEP Q & A 152: Information an Attorney of Record May Have to Submit in Reply to an Office Action, Reissue Application, or Reexamination Proceeding

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Question:

An attorney of record may have to submit information in reply to an Office action, a reissue application, or a reexamination proceeding. List 2 different types of information this may include.

Answer:

An attorney of record may have to submit information in reply to an Office action, a reissue application, or a reexamination proceeding; this information includes:

  • Information used in the inventive process, such as:
    • A copy of non-patent literature,
    • A publication application, or
    • A patent used in the inventive process
  • The publication date of an undated document mentioned by the applicant which may qualify as a prior art publication.
  • Comments on a new decision by the Federal Circuit that is relevant to the examination of the application.

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of applications.

The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 704.11  of the MPEP.  The following is a brief summary of section 704.11.

704.11 What Information May Be Required

This section discusses what information may be required in a requirement for information.