Patent Law

round 2 - continuation and claim rule review - part deux

By Douglas J. Sorocco, J. Matthew Buchanan, Laura C. Woods and Emily E. Campbell.

As the dust settles on the patent frontier, I bet every patent attorney/inventor/corporate counsel/law student is sitting at their desk reading and re-reading the USPTO rules.  Lucky for you, this week we are providing the key highlights via PHOSITA.  Today’s topic….claims and the dreaded Examination Support Document (ESD).

Claims

We heard the rumors out of the USPTO that patent applications would be limited to ten claims.  The good news – the USPTO did not stick with the 10 claim rule.  The bad news – you are now limited to 5 independent claims and 25 total claims (5I/25T) per patent application without an ESD.  If you happen to file a patent application exceeding the 5I/25T rule without submitting an ESD, the USPTO will send you a nice little notice requesting you either amend the claims for compliance or submit the ESD within 2 months. 

These new rules give you a couple of options in claim drafting.  The easiest solution is to not exceed the 5I/25T rule when you file your application.  Boring.

For the brave at heart, you can jack up the number of claims that you file, exceed the 5I/25T rule, and then submit a suggested restriction requirement (assuming you can) selecting without traverse 5 independent claims and 25 total claims.   Withdrawn claims are not counted in your 5I/25T.  Hopefully the Examiner agrees with your suggested restriction requirement or you may have a little problem getting a refund on the claims you withdraw/cancel.  (Watch out for the section on refunds due to cancellation of claims – Section 1.117). 

For the loonies out there, go ahead and exceed the 5I/25T rule without a suggested restriction requirement, but be prepared for the monster - the dreaded ESD.

The Dreaded Examination Support Document

Starting November 1st, the ESD rule applies to applications exceeding 5I/25T that have yet to receive the first Office Action.  An ESD includes the following:

• a statement that a preexamination search was conducted;
• a listing of the references deemed most closely related to the claims;
• identification of all of the limitations of each of the claims that are disclosed by each reference (OUCH) (Note – there is a small entity exception to this Rule – see Comments);
• a detailed explanation particularly pointing out how each of the independent claims is patentable over the cited references (DOUBLE OUCH); and,
• a showing of where each limitation finds support in the written description of the specification (TRIPLE OUCH).

My guess is that the ESD is probably not on the top ten list of things a patent attorney would like to file.

Full post as published by Phosita on September 25, 2007 (boomark / email).