Tuesday, November 21, 2006

The "examination support document" [ESD]

On January 3, 2006, the U.S. Patent and Trademark Office issued two Notices of proposed rulemaking that are intended to "reduce the amount of rework by the USPTO" and "prioritize the claims reviewed during the examination process."

IPBiz has reviewed the first rulemaking matter (on limiting continuing applications) and there is a discussion in 88 JPTOS 743.

The second rulemaking matter included something called an "examination support document" [ESD]: in the event that an application contains or is amended to contain more than ten representative claims, the applicant is required to submit an examination support document to “share the burden” with the PTO.

The examination support document requires (A) a statement that a search was conducted, (B) an information disclosure statement listing the most closely related references, (C) a comparison between the limitations of the representative claims and the cited references, (D) a detailed explanation of how each of the representative claims is patentable over the cited references, and (E) a showing of where the limitations of the representative claims are supported in the specification.

In an article in the September 2006 issue of IPT ("A 21st Century Strategy: When Time is of the Essence, Consider the New Petition to Make Special Practice"), Joseph S. Ostroff reminds us that an accelerated examination support document is already part of current "Make Special" practice, which became effective August 25, 2006.

Some of the items, like pointing out where each claim limitation finds support in the specification, might be done routinely to remove some burden from examiners. IPBiz generally likes the idea of non-limiting distinctions between the new invention and prior art, right in the specification.


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