In Star Fruits S.N.C., et al. v. U.S. et al. (Fed. Cir., January 3, 2005), the Patent Examiner issued a "Requirement For Information Under 37 C.F.R. 1.105" in which the Office sought "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." The Requirement noted that, to the extent Star Fruits did not have or could not readily obtain the required information, a statement to that effect would "be accepted as a complete response to the requirement for that item."
Star Fruits declined to provide the required information on the grounds that it was "not material to patentability of a new variety." The Office viewed Star Fruits's refusal to provide the required information as a "deliberate omission, not a bona fide attempt at a complete response," and issued a Notice of Abandonment. Star Fruits brought suit in the district court claiming the Office abused its discretion when it denied Star Fruits's petition challenging the Requirement For Information because, as a matter of law according to Star Fruits, the information the Office sought could not be used to reject Star Fruits's application.
The Federal Circuit was not pursuaded:
We think it clear that "such information as may be reasonably necessary to properly examine or treat the matter," 37 C.F.R. 1.105(a)(1), contemplates information relevant to examination either procedurally or substantively. It 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.
The duty of candor embodied in 37 C.F.R. Â§ 1.56 does not give the applicant the power to refuse a Requirement For Information under section 1.105. To allow such interference would have the effect of forcing the Office to make patentability determinations on insufficient facts and information. So long as the request from the examiner for information is not arbitrary or capricious, the applicant cannot impede the examinerâ€™s performance of his duty by refusing to comply with an information requirement which
[Furthermore,] Administrative Procedures Act challenges in cases like this are not properly directed to prospective patentability determinations. A claim that the Office is abusing its discretion in seeking information from an applicant because the Office might (or will) use that information to enter a rejection is a preemptive challenge to the Office's patentability determination. Assuming the Office intended to enter a rejection under 35 U.S.C. Â§ 102(b), the correctness of that rejection is not properly challenged by Star Fruits withholding information from the Office. Instead, Star Fruits must await a rejection under section 102(b) and then litigate the propriety of that rejection before the proper forum for such a complaint, in the first instance, the Board of Patent Appeals and Interferences, not the district court. Preempting the Office's decision-making by refusing reasonable requirements for information is not a course calculated to achieve a timely and equitable determination of whether a patent should be granted.