USPTO Guidelines for Examination Support Documents (ESD)

New Rule 256 (37 CFR 1.256) allows patent applicants to submit more than five independent claims or twenty-five total claims in an application if supported by a proper examination support document (ESD) prior to the first Office Action. The USPTO has released a set of guidelines for ESD content. [LINK]

An ESD has five substantive sections:

  • Preexam search statement;
  • Listing of closest references;
  • Identification of claim limitations found in references;
  • Detailed explanation of patentability; and
  • Showing where each limitation of each claim is supported in the specification.

The preexamination search statement must include searches directed to each limitation of each claim. Additionally, if the claims are amended to include further limitations, the search statement must then be updated. It is advisable to hire a professional searcher to conduct the search. (Before hiring ensure they understand that the search must be fully documented.)

The office only wants a listing of the most closely related references. The best closest reference is the one that discloses the most claimed limitations. Other closest references will disclose a claimed limitation not shown in any other listed reference. References that do not meet this criteria may not be cited i the ESD, but rather must be submitted in an IDS.  If the applicant later discovers an even better reference, the ESD must be updated.

Small entities will not be required to file the identification of claim limitations.

 

82 thoughts on “USPTO Guidelines for Examination Support Documents (ESD)

  1. Examiner’s don’t document in any detail searches for limitations in claims that are allowable based on dependencies from other claims, and they don’t perform a map of claim limitations to references unless they have a complete rejection. At best generic statements are made about relevant art not applied in a rejection. I don’t see how a USPTO search would be acceptable as an ESD.

    An ESD includes extra work on the off chance that it might be useful given that the patentability issues that might warrant an applicant doing a detailed search haven’t even been sorted yet. They will often contain searches and analysis that are irrelevant to determining patentability.

  2. Here is an interesting twist to the new ESD rules:

    1. File a PCT application designating the United States Patent Office as the searching and Examination authority.

    2. File the US national (when appropriate) using both the USPTO produced search report and examination document as your ESD.

    3. Under the rules of the ESD, would the USPTO’s own search and examination pass muster? I don’t think so.

    Please discuss…

  3. “We look forward to working with our Swedish colleagues to achieve our mutual goals of expediting review of patent applications while maintaining high quality examination” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. “Taking advantage of work completed by another office allows the USPTO to focus more of its resources on decreasing the time it now takes between the filing of an application and a final examiner decision.”

    So, the PTO will farm out searches but not accept them for ESDs.

  4. “Does anyone here think that mostly blank claim charts will not be usual?”

    Instead of mostly blank claim charts, I expect applicants to add caveats to the claim charts that basically say the identified passages are relevant to the claim limitation without admitting the claimed limitations are found therein. (Page 11 of the guidelines mentions identifying the “relevant” portions of the references.)

    I believe that leaving the charts mostly blank, instead of making a good faith effort to identify elements found in the prior art, will likely result in the ESD being rejected.

  5. The example of the claim chart on p12 of the guidelines shows elements in every box, i.e. it is a claim chart for an invalid claim. If I ever have to do an ESD, and I assume I will sooner or later, you can rest assured that most of the spaces will be blank, i.e. if I admit that an element is anticipated, there will be a column and line cite in the box, if not then nothing.

    Does anyone here think that mostly blank claim charts will not be usual?

  6. As a result of listening to the Senate Judiciary Committee’s hearing on regulatorty preemption of state law I have learned that the FDA has unjustifiably pre-empted holding pharmaceutical companies liable for deaths caused by defective medications. As a result many people are dying because of the usurpation of the national character through regulatory legislation. As a result, the problems with face with the USPTO pales in comparison with what others face. This brings to mind criminal liability of agents of the regulatory agencies. I believe there need to be greater accountability. If the agents cannot be held criminaly liable, prehapd we should petition Congress for the direct election of all high level managers of the agencies. Is anyone against democracy?

  7. “What’s the PTO’s end game?”

    Who knows? I have heard that, because of the examiners’ union, the USPTO will not demand more production out of the examiners. I can only assume that they hope that mandatory ESD’s will turn more applicants away because the cost will be too high.

  8. I recently talked to Margaret Peterlin, Deputy Director of the USPTO. She said that, if the ESD provision of House patent reform bill, H.R. 1908, makes it into law, the current leadership of the USPTO will enact rules that will require all applications to include an ESD regardless of the number of claims (I assume excluding micro-entities).
    <<<
    So what is point of doing this?
    The only way it will speed up examination is if the examiners can use the ESD while doing less or no searching themselves. If they have to do the same amount of searching, analyzing an ESD (which often will involve different art) will increase the examination burden.
    What’s the PTO’s end game?

  9. I recently talked to Margaret Peterlin, Deputy Director of the USPTO. She said that, if the ESD provision of House patent reform bill, H.R. 1908, makes it into law, the current leadership of the USPTO will enact rules that will require all applications to include an ESD regardless of the number of claims (I assume excluding micro-entities).

    While she expressed concern about inequitable conduct, she did not seem to understand (or at least care about) the effects the ESD will have on validity and infringement.

  10. If the new rules are implemented on Nov. 1, ESDs will be required in all applications (pending or subsequently filed) having more than 5/25 claims in which a FAOM hasn’t yet been sent out. The as-passed House version of the patent reform act included 35 USC 123 which would grant discretion to the Director to require ESDs in all applications (except those of “micro-entities”, a newly defined fiction).

  11. “I think that part of the rules package has to do at least as much with harmonization as with the backlog.”

    So, EPO and JPO are requiring EDSs? I think not.

    Last I checked the JPO still didn’t have a “duty to disclose” rule even remotely similar to ours. But in Japan, I believe there is also no presumption of validity, so the benefit of hiding a reference is minimized.

    (And I think the EPO also doesn’t have a similar duty to disclose rule, certainly not one that can effect invalidation of a patent if it be not complied with. But perhaps MaxDrei can say for certain.)

  12. I think that part of the rules package has to do at least as much with harmonization as with the backlog. An EDS in which the applicant identifies the closest reference and explains how his/her invention distinguishes above that reference sounds much like D1 practice to me. Many times on my docket, the applicants will submit corresponding applications from EPO, UK, JP, etc. The examiner always picks a D1 reference that someone solving the applicant’s stated problem would use as a starting point and the applicant amends the claims until they distinguish above that reference (and are allowed) or the application goes abandoned. I think this would be much better than what we are currently doing. It would prevent the applicant from switching inventions which happens often in my area, and it would prevent the examiner from doing rejections on completely new art once the previous set of references had been amended around. It seems to me that this would save much aggravation on both sides, result in a higher allowance rate, and better quality patents in which the presumption of validity would be much stronger because the best reference (D1) has already been distinguished over. Or am I missing something? Frustrated examiner at uspto dot gov

  13. Mr. Johng:

    “To compound this difficult task, the USPTO has de-emphasized the importance of classification over the last decade…”

    Truer words were never spoken, but I suggest that a more accurate statement would substitute “eliminated” for “de-emphasized. The classification system was created to give meaning to the phrase “…to a person having ordinary skill in the art to which said subject matter pertains…” Has anyone posting to this forum ever conducted a search using the bins in the PTO search room? I am not sure the bins even exist anymore. Say what you will about “old school” searching, but at least it was consistent with the 103 mandates. The current reliance on on-line database searches do flesh out individual elements of a claim, without due regard to the reason underlying the classification system, gives me pause for concern just how such an approach can be reconciled with yet another important portion of the statutory mandate that the “…subject matter as a whole…” is a necessary condition.

    As for castigating a specific administration, it is useful to bear in mind that so-called “patent reform” in large measure had its genesis in Congressional imperatives that began to appear with startling regularity in the late 70′s and early 80′s.
    Re-exam started back then as a “feel good” process that was largely worthless words on paper. Fees skyrocketed when someone got the bright idea to make the office self-sufficient by laying the cost on running the USPTO at the feet of applicants, all the while ignoring the public benefits served by disclosures. Fee diversion, which was just a matter or time before Congress noted yet another pot of taxpayer money, exacerbated the problem. Maintenance fees were implemented without the slightest thought that once a patent issued office involvement ceased entirely. IDSs were created to facilitate presenting examiners with what an applicant thought to be the most relevant prior art. While initially discretionary, the initial concept has since transformed to the point of now being mandatory. The list goes on, but in the interest of brevity I will limit my observations to just the few points noted above.

    All the while “reform” was speeding down the tracks a very important point was ignored almost completely…the fact that the patent system was rapidly pricing itself out of the reach of many ordinary people. Prior to “reform” the system was actually affordable. If memory serves me, the first application I filed incurred a filing fee in the order of about $100. Fees for extra claims were nominal. Petitions were modest in cost. Examiners as a general rule were quite knowledgeable. If I had a thorny question re the regs, I could simply pick up the telephone and talk with Pat Federico. Etc., etc.

    In my view the primary result from “reform”, and especially the “much needed reform” that many current proponents have “sold” to Congress, has been to do significant violence to the 1952 act. This is a sad situation indeed if the underlying purpose of the patent laws is to encourage the sharing of knowledge with the public at large in order to promote the useful arts.

    It seems we have arrived at a point where the entirety of “prosecution” is being laid and the feet and expense of inventors. Given this state of affairs, coupled with the impression that patentability is ultimately determined by the second-guessing of the judiciary, perhaps (tongue in cheek) we should simply allow inventors to perform all substantive duties of the USPTO, and then have any such inventors who really want to know if they have done a good job and possess a piece of paper having real “meat on its bones” to immediately file with a court a motion for a nice, shiny ribbon to be appended to the paper. At least this would seem to square with current reality.

  14. johng and defector,

    As a professional searcher, I agree with your assessments 100%. With examiner search logic now available on Pair for the public to review, we get to see what a difficult time the examiners are having with the myriad of databases and poor classification. I get time budgets an order of magnitude higher than an examiner to essentially perform the same job (since as defector said: I am “not an expert in any particular technology”) and it takes a good portion of that time to find the huge number of poorly classified PG-Pubs and patents.

    From a searching perspective, the writer of the ESD guidelines has done a good job of correcting many of the mistakes that were evident in the AE search guidelines and more explicitly listed what is acceptable (proximity operators, Boolean logic, text searches of subclasses) and not-acceptable (a list of key words with no defining of use). If I didn’t know any better, I’d say they cribbed one of my own search reports when it comes to showing the search logic. The only negative is still the burdensome NPL searching. Somebody at Dialog has done a good job of brainwashing the PTO into thinking that a pay per time, pay per query, and pay per hit service is something the public should use when there are alternatives that are cheaper (read free) and more effective.

  15. Yes, it is good and accurate defector.

    Here is an except from a brief I gave to Jon Dudas about three or four years ago. It dealt with similar theme of examiners and their searching expertise within narrow fields of technology. It was part of a comprehensive plan to deal with application churning and backlog. (I only had 12 hours to write it and stayed up all night doing it). He had just begun the second pair of eyes program. I told him his review program alone would not address root problems.

    “the USPTO must allow examiners to develop an expertise in a relatively narrow field of technology. Recent studies appear to suggest that the examiner’s search should have become more efficient as a result of the multitude of available electronic databases (e.g., see the U.S. Department of Commerce Office of Inspector General report of September 2004). However, it these reports do not seem to take into account the unique burden associated with a patent search. For instance, while giving examiner’s access to an increased number of databases may increase how comprehensive a search might be, doing so necessarily expands the number of references that an examiner must analyze. Additionally, the number of references an examiner must analyze grows daily as more patents are issued, more articles are written etc. Traditionally, examiners generally had well defined areas of expertise and a relatively smaller pool from which to search for relevant prior art. Such is not presently the case, especially in crowded and/or active fields of technology.

    To compound this difficult task, the USPTO has de-emphasized the importance of classification over the last decade, apparently in the belief that new electronic searching capabilities reduces or eliminates its importance. De-emphasizing classification, however, would appear counter-intuitive to any competent and experienced examiner. In fact, most decisions along these lines appear to have been arrived at by those who had not examined a patent in years or had never performed a patentability search of an invention. It has become increasingly difficult for examiners to familiarize themselves with prior art collections that could reach numbers in of tens of thousands, if not more.

    Hence, it would not seem reasonable to expect an average individual to quickly determine, with any degree of acceptable precision, the patentability of applications spanning broad areas of technology. At the same time, requirements relating to production quotas and the lure of cash awards (for achieving high production numbers) amplify the rush to get though the search phase of examination, which arguably is the most important part of the examination process. Inadequate searches and rushed analysis leads to piecemeal examination and prosecution continuum.”

  16. The USPTO offended everyone at their get together to explain the rules this week – several of the idiots in charged repeated the lie that “prosecution doesn’t start until appeal” line. The PTO is filled with people who have never practiced before the PTO so they have no idea what we go through.

    I guess they buy the crap being sold to them by the DC lawyers who only do appeals – what is the PTO comin’ to!

  17. Mark,

    I don’t know the answer, but maybe the best attack is to attack the PTO’s (more than fully funding) pocket book?

  18. The people in charge of the Marines are the ones dismantling the Office, so the notion that “we” could send in them in obviously silly and not to be taken seriously.

  19. Agreed Mark. But have you noticed how top-heavy the PTO management has become? When I was an Examiner, my boss’s boss’s boss was the Deputy Commissioner for Patents. How many management levels are there now between the top guy and the typical Examiner, I wonder?

  20. “These rules are nothing less than a plot to save money for the USPTO by forcing individuals to bear the cost of what the government should rightfully be responsible”

    Just a reminder that applicants already bear the full cost of patent examination. The USPTO is fully funded (and then some) by applicant fees.

  21. Here is an excerpt of a letter I wrote to my representative in Congress, which I think is appropriate:

    Let me explain something to you regarding patent quality. ONLY AN EXAMINER can perform a thorough search of invention. There is not a public searcher, attorney, or inventor alive that is as capable as an Examiner. Examiners have access to the deepest databases and work in a very narrow field that causes them to become, over time, experts in a particular “art” (area of technology). No one else can match them.

    In Europe, they tried splitting the examination and searching functions to different groups of people, and it was such a disaster that they reversed themselves and recombined the functions. The Examiner is the one that analyzes the references that only he is in the best position to locate, and the claims.

    The typical searcher is an expert at searching, but not an expert in any particular technology. The attorney is an expert at patent law, but not an expert in searching or in a particular technology. The inventor is an expert in technology, but not in searching. The Examiner is therefore in a singular position to carry out the functions of his or her office.

  22. I agree with anonymous. Most of the patent attorneys don’t know how to examine. The USPTO has the expertise for this endeavour. Perhaps a few examiners could set up companies to teach patent attorneys how to examine. I believe that would be most helpful. In fact, I like the idea of an ESD, so long as I am not forced to pay a private party for copies of their copyrighted material in order to access the resources of the USPTO. That is UNCONSTITUTIONAL!!!!

  23. Frank, why don’t you apply for a job at the USPTO? I’ll give you 8 months before you are fired for not producing. You do know that the attrition rate is pretty high, right? Why do you think that is? Because the job is so easy?

    If I was an examiner, I wouldn’t read an ESD simply because most attorneys don’t know how to examine. You wouldn’t want an examiner writing your claims, so why would you want an attorney examining the claims?

  24. Thanks Defector — As a reminder, there have been many instances where injured parties (or government officials) have been able to figure out the source of ‘anonymous’ postings. There are ways to ensure anonymity on the net – but those strong methods are rarely employed.

    Be careful what you post.

  25. Lets be careful what we say and how we say it. As the original “defector” (which relates to my former status of Examiner) I am well aware that I can be easily disbarred for suggesting that the U.S. government should be overthrown. The freedom of speech and the freedom to work in your chosen field are mutually exclusive to one another.

    That having been said, I agree whole-heartedly with the sentiments expressed above, and particularly the feeling of anger and betrayal of the American people by this Administration, the most ant “American” administration ever.

  26. How the F can they force a person to purchase private property to participate in the government process? Is this not the reason that people are given access to the laws for free? Is this not why prisoners are afforded access to law libraries? Is this not the reason that individuals may represent themselves before ANY government tribunal? I mean what the F are these people going to require next . . . that one must be of ordinary skill in the art before they can file a patent application . . . this is so unamerican, so unnatural that I believe the individuals who passed these rules are not Americans . . . at least not from the America I grew up and fought for and my ancestors fought for. These rules are nothing less than a plot to save money for the USPTO by forcing individuals to bear the cost of what the government should rightfully be responsible.

  27. How the F can they force a person to purchase private property to participate in the government process? Is this not the reason that people are given access to the laws for free? Is this not why prisoners are afforded access to law libraries? Is this not the reason that individuals may represent themselves before ANY government tribunal? I mean what the F are these people going to require next . . . that one must be of ordinary skill in the art before they can file a patent application . . . this is so unamerican, so unnatural that I believe the individuals who passed these rules are not Americans . . . at least not from the America I grew up and fought for and my ancestors fought for. These rules are nothing less than a plot to save money for the USPTO by forcing individuals to bear the cost of what the government should rightfully be responsible.

  28. Do the rules say how comprehensive the search needs to be? If I do a search on the specific point of novelty of my invention and get 0 results on the USTPO database, would it be enough to submit that document, showing no results?

  29. KCB, you missed it.

    265(c)(3) The listing of references required
    under paragraph (a)(2) of this section
    must also be accompanied by a legible
    copy of each cited reference, except for
    references that are U.S. patents or U.S.
    patent application publications.

  30. Alright. Now let us discuss outlawyering the laymen who proposed these rules. Firstly, an SB08 is merely one manner in which to bring prior art to the attention of the Examiner in the application. One can always use a Reul 1.132 declaration. I have used them often. Remember that only the information recited in the 1.132 declaration is considered brought before the Examiner. Any other information contained in a reference, but not discussed, is not considered to be brought to the attention of the Examiner.

    In addition, there is incorporation by reference. I cannot impress upon you enough the importance of incorporation by reference of material in other patents. In this manner, one may bring literally dozens of patents to the attention of the Examiner. For example, in the background section I believe that one could incorporate by reference entire classes of prior art that one believes relevant to the application. By virtue of existing procedure the entire material of these incorporated patents is deemed to be recited in the instant application.

    Now with respect to searching. This is simply done using NERAC for $250.00 per search. You draft your claims then list the elements and send the list of elements to NERAC for searching. Be sure to limit the number of hits; however, because NERAC has been known to return hundreds of abastracts.

    Now here is the rub . . . and I am mincing words here, but hey the USPTO deserves it, because of the unfairness of making these rules apply to pending applications. It is my sincere belief that I must search, I must provide my search query to the USPTO. However, there is nothing in the rules that require me to obtain the reference at issue. I intend to merely disclose the information I obtain from the search, i.e., the abstracts. Now here is where it gets interesting . . . I contend that a single listing of multiple abstracts consitutes a single document. There can literally be 500 abstracts in a single document. I do not believe that the USPTO can require me or my client to pay money to get the document that corresponds to the abstract . . . that is up to the USPTO. It appears that they do not want to incur the cost of obtaining these documents; however, there is nothing in the rules, from what I can tell that require me to obtain the documents. I merely provide the search and disclose the information I obtain from the search, i.e., abstracts. Nothing says that I must obtain the documents. END OF STORY

  31. “examiners would throw up their hands and allow crap like the Amazon single click patent.”

    I believe that patent is under reexam, after an extensive public prior art search (wasn’t there a $10,000 bounty for good prior art?). If prior art on the one-click patent was so scarce, how is the system failing us here?

  32. If you file PCT and have the USRO do the search, would that satisfy the search part of the ESD requirements? Then enter the national stage in the US? If you respond to the written opinion, then it seems like you could say that was your detailed explanation of patentability, and just the 112 stuff would be left.
    I don’t know, just thinkin’

    Not automatically. See bottom of page 2 of ESD Guidelines. Nor would search from prior-filed U.S. non-provisional. See top of page 3 of ESD guidelines.

  33. @frank. At one point i believe the US had a registration system – just register your invention and state your specification (no claims) – bop was on patent owner at trial to demonstrate invention, claims or scope (because there were not any claims) patentability, validity, infringment, damages etc.

    @real a. turney v us 273 us 510 would appear to support the maxim that the sovereign (the king) would not be able to accept a fee, based on a result. for example, accepting a fee of $5 for a court complaint, but having to return the fee for example on a demurer (sp?). Q: would uspto be on the wrong side of that equation in accepting a fee on a determination of an SNQ in a reexamination request , but having to return the fee on a finding of no SNQ?

  34. this is silly. lets just initiate a patent lottery. you pay the filing fee– skip the search — skip the ridiculous subjective application of common sense 103 rejections — skip the srr — skip the esd — skip the cip — skip the ridiculous appeal process with ever further subjective application of ksr — and simply spin a wheel to see who gets a patent and what the claims are– far easier — far faster — far easier to explain to client –just as predictable and probably more reliable.

  35. crs, registration is the way to go. I’m with you bro-ther. The entire examining corp can be dismantled and reassembled to serve us. Of course, PTO fees should shrink accordingly to about $699.95, with occasional specials, like limited time two-for-one deals.

  36. Since these rules require inventors to play checkers with themselves for claims exceeding the limit, why not just let everybody prosecute their own patents? After an exhaustive art analysis as stipulated, it wouldn’t be that difficult to roll your own rejections. Think of the savings in time, manpower, cost, overhead. It’s mind-boggling. Who’s with me on this?

  37. Sorry about the repetitive posts above.
    The back button in Firefox seems to trigger a new post.
    Is this a “feature” of the blog engine ?

  38. This is not exactly related to the present thread but still to the reform:

    Article 4 G of the Paris Convention reads:

    (1) If the examination reveals that an application for a patent contains more than one invention, the applicant may divide the application into a certain number of divisional applications and preserve as the date of each the date of the initial application and the benefit of the right of priority, if any.

    (2) The applicant may also, on his own initiative, divide a patent application and preserve as the date of each divisional application the date of the initial application and the benefit of the right of priority, if any. Each country of the Union shall have the right to determine the conditions under which such division shall be authorized.

    I have seen no discussion so far on how the limitation of “continuations” can be in agreement with the PC. I believe that “determine the conditions” should mean determine time limits, fees, formatlies etc, but that the “own initiative” of the applicant should not be restricted.

    Has someone an opinion on this ?

  39. “I am beginning to wonder if perhaps now is the time to face reality and change the name of the USPTO to the USTO? It seems that the letter “P” has fallen into disfavor.”

    Or USAPO “anti-patent”
    or USPPO “patent prevention”

    (I’m not so ineterested in trademarks …)

  40. “I am beginning to wonder if perhaps now is the time to face reality and change the name of the USPTO to the USTO? It seems that the letter “P” has fallen into disfavor.”

    Or USAPO “anti-patent”
    or USPPO “patent prevention”

    (I’m not so ineterested in trademarks …)

  41. “I am beginning to wonder if perhaps now is the time to face reality and change the name of the USPTO to the USTO? It seems that the letter “P” has fallen into disfavor.”

    Or USAPO “anti-patent”
    or USPPO “patent prevention”

    (I’m not so ineterested in trademarks …)

  42. “I am beginning to wonder if perhaps now is the time to face reality and change the name of the USPTO to the USTO? It seems that the letter “P” has fallen into disfavor.”

    Or USAPO “anti-patent”
    or USPPO “patent prevention”

    (I’m not so ineterested in trademarks …)

  43. Generic Commentator:

    What great “most creative” period of the software industry are you referring to? I would say that the last 10-15 years have probably been the most creative period, and that is the period where software patents have been applied for and granted most frequently (TONS of software patents were filed and granted long before State Street). Are you referring to the 80s and early 90s, where copying Apple’s user interface would be a great example of such successful “creativity”?

    Foolishness. Mega-giant IT corporations are behind these “reforms” and the truly creative small software companies will be effectively neutered by them. Go ahead and create something new and useful, some Mega-giant IT corporation will just incorporate it into its operating system and there will be nothing you can do about it.

    I guess the European software industry must be the most powerful in the world since they got it mostly right? NOT.

  44. Criminy, what a bunch of whiners (we) patent prosecutors are! Just keep the claim count down to 25/5, and you don’t have to mess with an ESD, which is the whole point of the new rule.

    Much of what we are seeing here is belated push-back to the filings of the nonsensical nineties, when gamblers would file applications on such dubious “inventions” as business methods with hundreds and hundreds of claims, and examiners would throw up their hands and allow crap like the Amazon single click patent. Everything since then (well, almost everything), the limitations on claim count etc. has been about the PTO expressing remorse and SCOTUS scratching its collective head over what the CAFC and PTO had allowed to happen.

    Speaking of which, when the right case comes along, the supremes are going to take the patenting of business methods (and most of software) clean off the table, and deliver a helluva spanking to the Federal Circuit for permitting this to go on as long as it has. That will cause all manner of shrieking from the Patent Bar, which has gotten rich off this, but certainly won’t hurt America any more than America was hurt by the absence of such patents in the preceding decades (when the software industry was at its most creative, and the American economy ruled the world).

    As with health care, the Europeans have got this mostly right.

  45. If you file PCT and have the USRO do the search, would that satisfy the search part of the ESD requirements? Then enter the national stage in the US? If you respond to the written opinion, then it seems like you could say that was your detailed explanation of patentability, and just the 112 stuff would be left.
    I don’t know, just thinkin’

  46. If you file PCT and have the USRO do the search, would that satisfy the search part of the ESD requirements? Then enter the national stage in the US? If you respond to the written opinion, then it seems like you could say that was your detailed explanation of patentability, and just the 112 stuff would be left.
    I don’t know, just thinkin’

  47. “However, as with many of the duties created by the new rules, the penalty for not following 1.78(f)(2)(iii) isn’t quite specified. (The only times abandonment is specified in the rules text seems to be in conjunction with the two-month ESD periods in 1.75(b)(3) and 1.265(e).)”

    Excellent point. I assume that there is no presumption that restricted claims are actually patentably and that the PTO wants it that way. As a result, if the examiner does a bogus restriction, perhaps in response to your SRR, the PTO can still have its post digestion cake in the form of a terminal disclaimer or by making you justify not having the claims in the original application after a restriction.

    Yes it is an run end around 35 USC 121, but we get that now already. Finding reasons why the new rules stink is way too easy. Let’s hear some reasons to like the new rules!

  48. Ladies and Gentlemen:
    I do not believe that the commissioner or ANY government agency for that matter can deny one access to the government resources by conditioning access to the same upon payment of money to a private citizen, i.e., dialog. Director Dudas . . . I do believe I will be seeing YOU in court.

    Posted by: The Man

    Hey, The Man, you’re my man! Greg Aharonian too! Let’s sue those %##*@*)(!!! Can I contribute to some fund for this? I am cancelling my membership to all the useless organizations I belong to.

  49. I don’t see how this presumption is allowed. Firstly, an administrative agency is required to grant specifcally affected individuals a hearing before a rule is enfoced against them. See Opp Cottom Milles, Inc. v. Administrator of Wage & Hour Div. 312 U.S. 126 (1941). However, a fair hearing requires must be open, before a neutral detached magistrate who has no idrect, personal, substantial pecuniary interest in reaching a conclusion against the application. See tumey v. Ohio, 273 U.S. 510, 523 (1927). Finally, the fact that this is a presumption does to attenuate the need for a hearing, because it is clear that a regulation including an overly attenuated presumption may be void on due process grounds. See Tot. V. United States, 319 U.S. 463 (1943).

  50. The 5/25 rule is 1.75. Inquiring Mind was asking a question about the presumption of 1.78(f)(2)(i) which applies to applications regardless of the number of claims, and which creates an affirmative duty (without further notice?) in 1.78(f)(2)(iii). However, as with many of the duties created by the new rules, the penalty for not following 1.78(f)(2)(iii) isn’t quite specified. (The only times abandonment is specified in the rules text seems to be in conjunction with the two-month ESD periods in 1.75(b)(3) and 1.265(e).)

  51. “For example, I haven’t seen anything in the final published rule that indicates that a restriction requirement made final can be used to rebut the presumption of 1.78(f)(2)(i)”

    Isn’t it the case that the 5/25 rule doesn’t apply between an application and the divisionals anyway?

  52. I am just waiting for the requirement of an applicant to affirm that they are not behind in their child support payments before they can file for a patent application :)

  53. Johng, that’s an interesting suggestion, but I guess it matters how exactly these rules will be implemented, which still isn’t clear. If you file multiple applications, my understanding is that the PTO could force you to combine them into one application unless each application would not support the claims from another/the others, which might require some kind of “carving out” from each specification. Would they want to make you combine applications? Dunno. But to be sure the multiple application strategy would succeed, you would have to do this carving out from each application so that it only supported its own claims, which seems like it could be a very complicated drafting exercise (and tedious!, not that that matters).
    On the other hand, with the SRR, it isn’t clear whether examiners would prefer to reject any SRR and keep all the claims in an application, thus severely limiting an applicant’s ability to pursue claims, or whether they will stick to the current practice of restricting as much as possible (and maybe even then some), and right now I don’t see anything preventing each examiner from deciding to take their own personal approach. Probably each art unit or even each examiner will develop their personal preference, so you’ll see even more differences in prosecution from different examiners than you probably do now.
    One thing I’ve been noticing about reading the rules is that I tend to interpret them in light of current practice, whereas actually I’m making assumptions that some of these things will remain the same even though not explicitly stated. For example, I haven’t seen anything in the final published rule that indicates that a restriction requirement made final can be used to rebut the presumption of 1.78(f)(2)(i) (i.e., if a DIV is filed after 11/1 in accordance with the new definition of 1.75(a), is it enough that it meets the definition of 1.75(a) to rebut the 1.78(f)(2)(i) presumption that it is not patentably distinct from its parent? I would think so, but why doesn’t it say so right there?).
    Taken with the PTO’s reported verbal assurances that the rules would be “retroactive” and so there was no need to file continuations prior to the publication date (when in fact there were provisions that took effect on the publication date), I think we should all be careful and take note of the PTO’s adoption of a stance not unlike that of an adversarial litigator, and interpret accordingly.

  54. “(1) file multiple applications and declare/give reasons why they are distinct, or (2) file only one and submit the SRR?”

    The question is whether in each case your arguments will be evaluated using the same standard.

    With multiple applications, the PTO could provide a hard standard for evaluating claims as patentably distinct compared to the standard used to find distinct inventions in a restriction. In that case, you may not be able to achieve a result comparable to an examiner accepting your SRR. You do have the ability to challenge the PTO’s contention that your claims are not patentably distinct, but who knows how hard that will be.

    On the other hand, if you provide an SRR,the examiner always has discretion not to restrict and you have no rights to appeal/petition a refusal to restrict.

  55. Johng, my feeling is that as long as you stay below 5/25 after the “I/we claim:” or “What is claimed is:” in your original application, the SRR may be the better way to go, but each approach has its risks, and I’m not fully sure. (If needed, you can perhaps place claims 26-NN at the end of the detailed description of the original application as prose where they can be ignored or objected to.)

    If you’re below 5/25 and your claims go in 5 different directions, what incentive will the Examiner have not to restrict you? He wants less work, and you want the four divisionals, so everything seems peachy, right? BUT, what if he allows the original application (say it comes up for first action on September 28…) and you *needed* the other NN claims to secure full protection, what then??

    The other way you mentioned (1), you will need to make declarations regarding the claim scopes in your applications that can, in the end, only be used against you. Or, if you choose the terminal disclaimer route, you’ll need to answer the “when did you stop beating your wife?” question of 1.78(f)(ii)(B).

  56. What do you think would be a better approach in the above multi-invention scenario:

    (1) file multiple applications and declare/give reasons why they are distinct, or

    (2) file only one and submit the SRR?

    No effective difference? I think you might be better off originally filing them as separate applications, just in case an outright refusal to restrict is made on the initial action. Would the PTO issue one unified action for all separately filed applications at once?

    Wouldn’t examiners like the separately filed scenario compared with the first (i.e., more counts, multiple applications could be worked on at the same time instead of waiting for divisionals to trickle in)?

  57. “there was a time (at least in the old days, and maybe still today) when an examiner was required to write a claim for a pro se (unrepresented) applicant when the examner determined that there was allowable subject matter in the application, so professional help/representation was not needed to obtain a patent (though it was always prudent).”

    Fascinating.

  58. I think you have to limit yourself to a maximum 5-way suggested restriction with 5 independent claims and 4 dependent claims for each distinct “invention” set. That way, even if the restriction is denied you still meet the 5/25 and no ESD is required. If granted, you supplement your claim sets in your divisional with your new “allotment” of 5/25 for the divisionals.

  59. Just Visiting, the rules are so convoluted, and don’t make logical sense when applied to any sort of real-world or hypothetical situation.

    Yes, I think the SRR may be your get out of jail free card for 1.704, but if it is not accepted, then it can also be your “Go directly to jail within two months – do not pass Go” card under 1.75(b)(1) if filed without a compliant ESD. And if you purposefully file more than 5/25 claims and a deficient ESD that you knew or should have known would not be accepted (and an SRR to get around 1.704), then is your non-compliance with 1.75(b)(1) really “inadvertent” so as to afford you of the two month “grace period” of 1.75(b)(3)? And if your non-compliance is not “inadvertent” under 1.75(b)(3), what happens to your client’s application e.g. under 1.75(b)(1)?

  60. Mrbellie, I believe the man is referring to the right to access, though I like you may not see the impediment that the man sees, since conceivably he can conduct his own search on free web-based systems (though those systems will likely retrieve perhaps 25% or less of the pertinent art unless inordinate amounts of time are spent; the EPO system is much more adept for quickly drumming down than the USPTO system, but the USPTO system includes full-text search capability).

    But to address your point, there was a time (at least in the old days, and maybe still today) when an examiner was required to write a claim for a pro se (unrepresented) applicant when the examner determined that there was allowable subject matter in the application, so professional help/representation was not needed to obtain a patent (though it was always prudent).

    Requiring an applicant to do more than the agency itself does or is required to do for the search seems to be the ultimate in arbitrary and capricious. Especially when both the statutory and regulatory burdens for patentability determination fall on the agency.

  61. Could someone check this. As I read rule 1.704, if you submit an ESD that is found not to be in compliance, any patent term adjustment due to 5 years of the PTO not looking at your application is gone (starting at 4 months after your filing data). On the other hand if you submit a SRR, there is no chewing up of your term adjustment regardless of whether the PTO accepts your adjustment.

    I don’t believe the PTO will interpret the rule quite this way, but I’m not sure what they really will do. They could 1) excuse minor deviations as not eating up the term adjustment using PTO discretion 2) slam all variations 3) not excuse variations when the SRR is not accepted 4) actually accept the SRR as a get out of jail free card.

  62. Evidence that USPTO rules contravene the statute is provided by Congress itself. Members of Congress inserted provisions in HR-1908 that propose to expressly authorize the USPTO to do what it has essentially promulgated by its recent ESD and continuation rules. If the USPTO has this authority under the current statute, why amend it with the proposed provisions of HR-1908?

  63. I am beginning to wonder if perhaps now is the time to face reality and change the name of the USPTO to the USTO? It seems that the letter “P” has fallen into disfavor.

  64. The man,
    Could you explain to me what you are referring to?
    I have not read the document yet but I would
    be surprised if the PTO actually makes
    such a requirement.

    I would not think that requiring a search is the same
    as requiring the payment of money to a private citizen.
    In practice, I think that to meet the requirements
    of the PTO would indeed require professional help but
    is this not the situation that exists now with patent
    applications in general?

    Like I said, I just need clarification as to what you
    mean.

  65. Ladies and Gentlemen:
    I do not believe that the commissioner or ANY government agency for that matter can deny one access to the government resources by conditioning access to the same upon payment of money to a private citizen, i.e., dialog. Director Dudas . . . I do believe I will be seeing YOU in court.

  66. If, as “real anonymous” points out, the PTO will do its own
    thorough search, why bother with the ESD at all?

    I am actually starting to think the PTO could be a waste
    of taxpayer money if we, in effect, do all the
    work for them.

    A point I would like comment on. In the House bill, a
    search will be required no matter how many claims you have.
    An exception exists for “micro-entities”. However, there
    are at least two problems with their definition of a
    micro-entity.
    1)If an inventor on the application has applied for
    more than 5 patents, he/she is not a micro-entity.
    2)If an inventor on the application makes more than
    two and one half times the median income he/she is not
    a micro-entity.

    The problem with 1 is that if someone works for a company
    and is on more than 5 applications, this definition seems
    to prohibit that same inventor from later applying as an
    individual or even at some later date with a new
    employer that may be a start-up. Also, the wording
    seems to me to be a lifetime count. Talk about discouraging
    innovation.

    The problem with 2 is that most people feel the search
    opens up a can of worms for liability and enforcement.
    Why would someone have to be subjected to
    increased liability or possible enforcement issues
    because of their income? Seems unconstitutional
    to me but I’m not actually an attorney.
    Also, with a law such as
    this, now we get to bring in the IRS so attorneys
    can audit the tax returns of all inventors party
    to trying to enforce their constitutional rights.
    Sounds expensive and time consuming.

  67. For god’s sake, what a nightmare! This is, by far, more detailed and exhaustive than anything an examiner produces. The cost of this document will make filing fees look like chump change.

    PTO, why don’t you accept your absolute failures and give it up? A robot is already collecting applications, responses and fees, so extend the robot’s responsibilities to “examining” our applications for registration. Get rid of those pesky humans.

  68. Page 12 says it all.

    But I also like page 2:

    “It is strongly recommended that applicants include disclosed but unclaimed features that applicant may later claim in the initial preexamination search to avoid the need to update the preexamination search.
    o For example, for any amendment to the claims that is not encompassed by the previous ESD, applicant is required to provide a supplemental ESD that encompasses the amended or new claims at the time of filing the amendment.”

    So with each amendment the applicant makes to distinguish over the prior art, he will also have to provide a reference and analysis to reject it.

    [The sad part is, that by and large, the USPTO knows nothing about advanced searching. What the USPTO thinks is a “search” is exactly what was being done in the 1980s. I’ve never seen a US examiner that knows how to search Japanese art with F-Terms of FI, who knows how to use “double NOT” statements to highlight essential terms in EAST for effective browsing, who can cross-file search (limiting results with one database file using its strengths and then dumping the limited results into another file to use its strengths). In fact, the very-useful (for invalidating patents) ECLA breakdown codes from the EPO have been *purposefully* stripped from the examiners’ EPO database in EAST, assumedly to “dumb it down” for general use. Is it any wonder then that upwards of 75% of the patents issued in some fields have independent claims that are anticipated by the prior art? Oh, you protest, but this is the applicants’ fault, the very thing we’re trying to correct! Nay, when in the past century has it *ever* been required that the applicant examine his own application, or make a determination of what is patentable? This is the very reason the applicant has always brought his application before the USPTO! Rather it is the USPTO that has become incapable of examination due to its own incompetencies, and now wishes to abdicate from its Constitutional responsibilities by shifting them to the applicants. Oh, but you argue, the USPTO will still conduct its own thorough search! You believe that? The same kind of thorough search it has conducted in the past? Have you ever heard the phrase, “Close enough for government work”? When you tolerate the government’s incompetence in these matters, you foster it. And Congress and the USPTO are attempting to foster it, or at least to cover it up by shifting the blame to the applicants.

    And so without the requisite expertise of its own in the field of searching, the USPTO now dictates to the applicants, “Do as I say, not as I do.”

Leave a Reply

Your email address will not be published. Required fields are marked *

You may use these HTML tags and attributes: <a href="" title=""> <abbr title=""> <acronym title=""> <b> <blockquote cite=""> <cite> <code> <del datetime=""> <em> <i> <q cite=""> <strike> <strong>