USPTO Issues Guidelines for Examination Support Documents

Starting November 1, 2007, a U.S. patent applicant may present more than five independent claims or more than twenty-five total claims in an application, if applicant files an examination support document ("ESD") in compliance with 37 CFR 1.265 before the first Office action on the merits of the application. The USPTO has now published its guidelines for these ESDs which provide several enlightening examples.

An ESD must include the following:

1. Preexamination Search Statement
2. Listing of References Deemed Most Closely Related
3. Identification of Claim Limitations Disclosed by References
4. Detailed Explanation of Patentability (particularly pointing out how each of the independent claims is patentable over the cited references); and
5. Showing of Support under 35 U.S.C. 112, ¶1 (where each limitation of each of
   the claims finds support, including in each such priority or benefit application in which such
   support exists).

With reghard to the first item, "a search that includes the following three items should generally be sufficient:"

1. A classification search of U.S. patents and published patent applications
2. A text search of the U.S. patents and published patent applications, foreign patent
   documents, and non-patent literature (NPL) (see example below); and
3. A search employing any special tools.
   

For each reference cited, the ESD must include an identification of all the limitations of each of the claims (whether in independent or dependent form) that are disclosed by the reference:



Professor Wegner has already noted that the guidelines "manifest precisely the sham nature of the ESD program as a way to compel compliance with the '5/25' claiming rule that becomes effective November 1, 2007." Indeed, according to the guidelines,

Applicants who are preparing an examination support document under 37 CFR 1.265 may find the information on an accelerated examination support document helpful because the requirements for an accelerated examination support document are similar to the requirements for an examination support document requirements under 37 CFR 1.265. See Changes to Practice for Petitions in Patent Applications To Make Special and for Accelerated Examination, 71 FR 36232 (June 26, 2006), 1308 Off. Gaz. Pat. Office 106 (July 18, 2006) (notice). The USPTO has posted samples of a preexamination search document and an examination support document under the revised accelerated examination procedure on the USTPO’s Internet Web site
at http://www.uspto.gov/web/patents/accelerated/.

"According to a study of PTO statistics by Stephen B. Maebius, out of 300 accelerated examination petitions that have been considered, 241 have been denied," writes The Good Professor. "Phrased differently, only 19 % of the accelerated examination requests have passed procedural muster. Imposition of a procedure so complex and fraught with uncertainties so that eighty-one (81) percent fail clearly shows a shortcoming in PTO management."