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Star Fruits v. United States: Federal Circuit Endorses The Patent Office’s Broad Authority To Demand Supplemental Or Ancillary Information From A Patent Applicant

Corey Tumey

The United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) has recently provided additional guidance on the scope of information a United States Patent Examiner may request from an applicant for a patent in a Requirement For Information under 37 C.F.R. § 1.105. In Star Fruits v. United States, No. 04-1160, 2005 WL 11560 (Fed. Cir. Jan. 3, 2005), the Federal Circuit affirmed a district court’s summary judgment ruling that the United States Patent and Trademark Office (“PTO”) did not act unlawfully when it deemed a patent application abandoned when the applicant failed to respond to an Examiner’s Requirement For Information under 37 C.F.R. § 1.105.

37 C.F.R. § 1.105

A Requirement For Information under 37 C.F.R. § 1.105 gives the Examiner discretion to require an applicant to submit “such information as may be reasonably necessary to properly examine or treat the matter.” Several exemplary categories of information that may be requested are listed in 37 C.F.R. § 1.105. These include information used to draft the application, information used in the invention process, information regarding any use of the claimed invention, and information regarding whether the claimed invention is an improvement. After receiving a Requirement Ffor Information, the applicant is provided a specified time for filing a response. Absent timely response before this deadline, the application will become abandoned 37 C.F.R. §§ 1.105(c), 1.135. While this Section of the Patent Rules appears on its face to give the Examiner broad discretion as to what information may be requested, the Federal Circuit substantively addressed the scope of such a request in Star Fruits for the first time in recent memory in an appellate court decision.

Prosecution Summary

Star Fruits is the assignee of the patent application at issue, which is directed to a variety of peach tree. Star Fruits, 2005 WL 11560, at *3. During prosecution, the Examiner issued an Office Action that included a Requirement For Information, which specifically requested the submission of “any information available regarding the sale or other public distribution of the claimed plant variety anywhere in the world” and “copies of the application, published proposed denomination and published Breeder’s Right grant.” Id. The PTO and Star Fruits disputed at trial and on appeal the factual issue of whether the requested information could have supported a rejection under 35 U.S.C. 102(b). Id. at *5-6. Star Fruits responded to the Requirement For Information by informing the PTO that it would not comply with the PTO request because the requested information was “not material to patentability of the new variety.” Id. at *3. Because of Star Fruit’s refusal to comply, the PTO issued a Notice of Abandonment, in response to which Star Fruits petitioned the Director under 37 C.F.R. 1.181 to accept its response. Id. The Director denied Star Fruit’s petition. Id.

Summary Of The Legal Issues

In response to this denial, Star Fruits initiated an action, in the United States District Court for the Eastern District of Virginia, alleging that the PTO abused its discretion when it denied Star Fruit’s petition challenging the Requirement For Information. Id. In particular, Star Fruits alleged that its petition was proper because “the information the Office sought could not be used to reject Start Fruit’s application.” Id. The district court found, though, that the information that may be requested under 37 C.F.R. § 1.105 includes information “that may not be directly used to reject an assertion of patentability.” Id. at *4. As a result, the district court held that Star Fruits had indeed effectively abandoned its application by refusing to provide the requested information. The court thus granted summary judgment in favor of the United States. Id. Star Fruits appealed the ruling of the district court to the Federal Circuit, which affirmed the district court’s judgment. Id. at *3.

In making its decision, the Federal Circuit first addressed the scope of information that may be requested under 37 C.F.R. § 1.105. Id. at *4. As previously noted, this Section allows the Examiner to request “such information as may be reasonably necessary to properly examine or treat the matter.” 37 C.F.R. § 1.105. Star Fruits argued that the duty of candor under 37 C.F.R. §1.56 restricts the scope of information that may be requested under Section 1.105 to information that is material to patentability. Star Fruits, 2005 WL 11560, at *4. The Federal Circuit disagreed with Star Fruits. Id. at *5. The court instead held that Section 1.105 “includes a zone of information beyond that defined by Section 1.56 as material to patentability, and beyond that which is directly useful to support a rejection or conclusively decide the issue of patentability.” Id. Thus, an applicant cannot refuse to comply with a Requirement For Information solely on the ground that such request seeks information beyond that whose voluntary disclosure would be subject to the applicant’s affirmative duty of candor and disclosure under Section 1.56. Id. Instead, the Examiner “can require the applicant to submit such information when it is known or readily available.” Id.

The Federal Circuit next addressed what it considered the “real issue in this case, which is whether the Office can use section 1.105 to compel disclosure of information that the examiner deems pertinent to patentability when the applicant has a contrary view of the applicable law.” Id. As previously noted, the Examiner believed that the requested information concerning foreign sales and Breeder Rights grants might support a rejection. Id. On the other hand, Star Fruits did not believe that the requested information could support a rejection, and contended that the PTO’s demand for such information as a condition of avoiding abandonment was improper and an abuse of the PTO’s discretion. Id. at 6.

In addressing this issue, the court noted that Section 1.105 clearly allows the Examiner to request information that the Examiner — not the applicant — considers relevant to the issue of patentability. Id. The court further noted that the applicant cannot refuse to respond to a reasonable Requirement For Information and thus preempt the PTO’s decision-making authority. Id. For instance, the court stated that “so long as the request . . . for information is not arbitrary or capricious, the applicant cannot impede the examiner’s performance of his duty by refusing to comply with an information requirement which proceeds from the examiner’s view of the scope of the law to be applied to the application at hand.” Id. (emphasis supplied).

Therefore, the Federal Circuit held that the Examiner’s Requirement For Information was not arbitrary or capricious and was, instead, a reasonable request within the scope of Section 1.105. Id. at *7. As a result, the court affirmed the district court’s judgment, specifically, that the PTO did not act unlawfully when it deemed Star Fruit’s application abandoned. Id.

Significance Of The Federal Circuit Decision

Based on the Federal Circuit’s holding in Star Fruits, an applicant or patent practitioner should be aware of the broad discretion granted to the PTO to request information under Section 1.105 of the Patent Rules. Information that may be requested “includes a zone of information beyond that defined by section 1.56 as material to patentability,” and a Requirement For Information should be complied with “[s]o long as the request . . . is not arbitrary or capricious.” Id. at *5-6. The Star Fruits decision suggests that the Courts will show significant deference to the PTO’s administrative agency decisionmaking as to the relevance of requested evidence, and accordingly will hesitate to find the request for such evidence arbitrary or capricious except in the most unusual cases. Accordingly, failure to comply with a Requirement For Information is a step that no applicant should take lightly, as it may have serious negative consequences that can include abandonment of the application.