[Patentpractice] Responding to a Rule 105 Request for Information

[Daniel Feigelson]

Seems to me that that's covered by 35 USC 119(b)(e) and 37 CFR
1.55(g)(3)(iii): the examiner can ask for such a translation. It doesn't
appear that that's what rule 105 is about.


On Sun, Jun 1, 2025 at 11:25 AM Randall Svihla <rsvihla at nsiplaw.com> wrote:

> What if the priority documents are not in English?
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> Randall S. Svihla
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> NSIP Law
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> Washington, D.C.
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> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Daniel Feigelson via Patentpractice
> *Sent:* Sunday, June 1, 2025 4:20 AM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Daniel Feigelson <djf at 4d-ip.com>
> *Subject:* Re: [Patentpractice] Responding to a Rule 105 Request for
> Information
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> [image: Image removed by sender.]
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> I've never had a request under Rule 105. But I don't see in the wording of
> the rule how 105 authorizes an examiner to ask for information about "the
> appropriate priority date" of a claim. 105 deals with providing information
> regarding prior art or the finding of prior art, which is why it refers to
> rule 56. Entitlement to priority (or to the benefit of an earlier filing
> date) is (a) tangential to finding prior art (it determines whether or not
> a publication may be cited against a particular claim, but is not necessary
> for finding the publication), and (b) something that the examiner can
> determine on his own: he can read through the priority document(s) and/or
> the earlier US applications for which the benefit of an earlier filing date
> is claimed, and determine earliest priority or benefit date for each claim.
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> Does anyone know what statutory section serves as the basis for rule 105?
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> Dan
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