[Patentpractice] Responding to a Rule 105 Request for Information

Sun Jun 1 11:42:14 UTC 2025

(1) It appears to me that unless the examiner rejects a claim in the CIP based on prior art that requires the applicant’s reliance on an earlier priority date, the applicant has no obligation to establish any priority date – the CIP filing date is sufficient.
MPEP 201.08 provides:
“The Office does not need to make a determination as to whether the requirement of 35 U.S.C. 120<https://www.bitlaw.com/source/35usc/120.html> that the earlier nonprovisional application discloses the invention of the second application in the manner provided by 35 U.S.C. 112(a)<https://www.bitlaw.com/source/35usc/112.html> is met unless the filing date of the earlier nonprovisional application is relied upon in a proceeding before the Office. Accordingly, an alleged continuation-in-part application should be permitted to claim the benefit of the filing date of an earlier nonprovisional application if the alleged continuation-in-part application complies with the other requirements of 35 U.S.C. 120<https://www.bitlaw.com/source/35usc/120.html> and 37 CFR 1.78<https://www.bitlaw.com/source/37cfr/1-78.html>, ….. “

The MPEP is binding on the PTO and the burden is on the examiner to make a relevant prior art rejection that requires antedating the reference before demanding priority information under Rule 105.

(2) The PTO’s authority for Rule 105 is found in its rulemaking power to “establish regulations, not inconsistent with law, which-(A) shall govern the conduct of proceedings in the Office.” 35 U.S.C. § 2(b)(2).
See the Federal Circuit’s discussion on the PTO’s authority under Rule 105 in Star Fruits v. USPTO, No. 04-1160<https://caselaw.findlaw.com/court/us-federal-circuit/1320804.html> (Fed. Cir. 2005).

Best,

Ron
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Daniel Feigelson via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Sunday, June 1, 2025 1:32:11 AM
To: Randall Svihla <rsvihla at nsiplaw.com>
Cc: Daniel Feigelson <djf at 4d-ip.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Responding to a Rule 105 Request for Information

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<mailto:rsvihla at nsiplaw.com>> wrote:

What if the priority documents are not in English?

Randall S. Svihla

NSIP Law

Washington, D.C.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Daniel Feigelson <djf at 4d-ip.com<mailto:djf at 4d-ip.com>>
Subject: Re: [Patentpractice] Responding to a Rule 105 Request for Information

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.

Does anyone know what statutory section serves as the basis for rule 105?

Dan

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